Provisional Patent Applications: Preserving IP Rights

Assessing Whether to Use and Strategies to Leverage Provisional Applications

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Thursday, August 13, 2020

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Program Materials

This CLE webinar will discuss provisional patent applications, their benefits and limitations, and best practices for leveraging the applications. The panel will examine when and why to use provisional applications and the issue of tying non-provisional patent applications to provisional applications.

Description

Under the first-to-file patent system, a patent claimant should file a patent application as soon as possible. Provisional patent applications will establish priority and meet the need to act quickly under the new system. A provisional application extends the term of patent protection for an additional year.

Patent counsel must understand and weigh the benefits and limitations of the provisional application before filing. The application lays the foundation for procuring a patent, avoids statutory bars, and preserves absolute novelty for foreign filings. However, it also may result in the loss of trade secrets and delay in patent issuance.

How far should patent counsel go to ensure that non-provisional applications obtain priority back to provisional applications? Non-provisional applications will not receive priority over inadequate provisional applications. However, once an insufficient provisional application has been filed, there is no way to restore priority to the filing date of the inadequate provisional application.

Listen as our panel discusses the benefits and limitations of provisional patent applications as well as when and why to use provisional patent applications. The panel will examine the issue of priority and tying non-provisional applications to the provisional patent application and offer best practices for leveraging provisional applications.

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Outline

  1. Benefits and limitations of provisional applications
  2. When and why to use provisional patent applications
  3. Priority--non-provisional applications to provisional applications
  4. Best practices for leveraging provisional patent applications

Benefits

The panel will review these and other key issues:

  • Under what circumstances will a patent claimant get the most out of a provisional patent application?
  • What are the benefits and limitations of using a provisional patent application?
  • How can a claim to a provisional application affect the outcome of an IPR filed against the issued patent?
  • What are the important considerations when determining whether and when to use a provisional application?

Faculty

Lazar, Dale
Dale S. Lazar

Retired Partner
DLA Piper LLP (US)

Mr. Lazar counsels on intellectual property matters concerning a variety of technologies. He concentrates his practice...  |  Read More

Lohse, Timothy
Timothy W. Lohse

Partner
DLA Piper LLP (US)

Mr. Lohse concentrates his practice in patent prosecution, patent litigation and patent counseling. He provides patent...  |  Read More

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