5 Things to Consider When Filing a Provisional Patent in Chicago
Filing a Provisional Patent: Understanding and Complying with Federal and State Regulations3 min read
Filing a provisional patent requires an understanding of both federal and state regulations, and it can be difficult to ensure that all of the regulations are followed. For those located in the Chicago area, this task may be even more daunting due to the state of Illinois's complexity concerning intellectual property protections and rights. Often, businesses and inventors look for the assistance of expert counsel to understand the needed steps to take in order to register a provisional patent. Here are five must-know facts to consider when filing a provisional patent in the Chicago-area:
1. Start With a Comprehensive Patent Search
The first step to take when registering a provisional patent should be to complete a comprehensive patent search. A patent search will help to ensure that the invention has not already been registered to another inventor, company, or entity. An experienced patent attorney can be invaluable when conducting a comprehensive patent search, providing guidance on the best methods for vigorously searching for related patents.
2. Understand the Difference Between Provisional and Non-Provisional Patents
An inventor or business must understand the differences between non-provisional and provisional patents when seeking to register one. A provisional patent is an inexpensive, quick option that will grant the inventor one year to decide whether to file a non-provisional patent application. The major advantage of this is that the applicant is granted the earlier filing date, so that it is the original patent in the event of patent infringement. However, a provisional patent offers very limited protection, and the non-provisional patent must be filed within one year for the individual or company to maintain the provisional patent filing date as the priority date.
3. Be Sure to Comply with All Rules
When submitting a provisional patent application, the inventor must ensure that all of the regulations put in place by the USPTO are followed. Specifically, a specification must be included in the patent application in order for it to be approved. The specification should include a description of the invention, as well as any drawings that illustrate the invention. Additionally, the exact scope of the invention should be described or claimed within the patent application in order for it to be accepted. The USPTO may reject the application if any of these criteria are not met.
4. Utilize the Assistance of an Experienced Local Attorney
Because of the complexity of filing a provisional patent, many — especially those in the Chicago area —seek the assistance of legal counsel. An experienced lawyer can provide valuable advice and guidance during the patenting process, while also ensuring that all of the legal forms are professionally filled out. Often, they may even file the paperwork for you. However, it is important to choose the right attorney who understands how the laws differ from state to state, and how the laws of the state of Illinois directly apply to the inventor’s case.
5. Be Prepared to File Continuation Patents as Needed
As previously noted, a provisional patent provides the applicant with a priority date only up to one year from the filing date. If, at that point, the inventor believes that the invention may be viable, they must then file a non-provisional patent in order to have the invention officially recognized and protected by the USPTO. Once that is filed, the inventor must thenfile continuation patents as necessary, in order to maintain and renew their patent rights. A knowledgeable attorney can help guide the inventor when it comes to filing these continuation patents.
Filing a provisional patent in Chicago can be a complex and sometimes confusing task. By keeping the five steps mentioned above in mind, inventors and businesses can properly protect their intellectual property rights and ensure a successful patent application process. Seeking the guidance of qualified counsel can also provide additional peace of mind during the process and help protect one’s inventions fully.