The Strategy Behind Filing Provisional Patent Applications

The Strategy Behind Filing Provisional Patent Applications by Pat Werschulz

In a previous article we discussed the timeline of a provisional patent application. In this article, we continue to explore the strategy that can be applied to this type of application.  

Often, clients are wary about committing to full patent applications while in development of a product. However, during this development phase, many are concurrently engaged in public disclosure of their product. If this is the scenario, it may be prudent to file multiple provisional applications throughout the year, culminating in a utility patent that references them all. In so doing, all coordinating provisional applications will have an established date that’s prior to when the nonprovisional utility patent is filed. This is a smart strategy for a product that’s evolving.

It is important to also understand that the utility patent is based on how the product functions; its appearance is less important. Often, I will see a product in a rudimentary stage that isn’t necessarily indicative of how the end product will ultimately turn out. The utility patent is contingent on the product’s workings, not its aesthetics. The filing process should begin when the client has finalized how the product functions and its basic structure, not its appearance.

Example:

One of my clients has developed a patented product, with two more pending, that’s currently on the market called the Airlighter®. This tool heats wood or charcoal fires up to cooking temperature in 5 minutes without accelerant such as lighter fluid.

When I had my initial conversation with the three family members who invented the product together, we researched whether the product was novel as we prepared to file a provisional patent. At that time, the prototype was a 15 oz. disposable water bottle, battery, and a fan held together with duct tape. The inventors described to me how to worked, and I wrote it down on paper.

First, we filed a provisional patent. Subsequently, we filed a nonprovisional application and were issued a patent.

As time went on, specifically for the nonprovisional patent, the drawings of the product became much more sophisticated and realistic. In essence, the purpose of the drawings is to show how all the parts fit and work together. When the patent was issued, the drawings were nice; however, the true elegance of the final product is not represented in the drawings at all. The appearance of the final product is now protected by a design patent.

When strategizing, it’s important to remember that the appearance of the product can be modified throughout the development process. The functionality of the product is what is used to determine utility patent eligibility.

How a product looks may be patentable, too, if the appearance is ornamental. The type of patent that protects how a product looks rather than function is a design patent which we will discuss in future articles.

Please contact me with any questions about this process.

Patricia Werschulz

Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
908-313-2347