The Explosive Growth of  Prior Art and the Urgency To File Preliminary Provisional Patent Applications 

Takeaway: It is very important to file a provisional patent as soon as possible as the first step to patent protection. 

The establishment of a first-to-file patent priority system in the United States, and an explosive growth of prior art documents on the web and at various patent offices throughout the world require quick and early filing of patent applications.

“Preliminary” provisional patent applications (“PPAs”) are used primarily to quickly secure a priority date and are different in form and substance from later filed and highly-detailed patent attorney-drafted non-provisional applications. The urgency to file “preliminary” PPAs was enhanced by recent enactment of the AIA, a patent reform act that greatly added to the procedural and cost benefits of PPAs. The AIA has continued to fuel growth in popularity of “preliminary” PPAs due, in part, to the large number of new prior art issues arising every day.

When using preliminary PPA filing tools like, practice pointers for in-house counsel include the following four (4) key points:

(1) Always review the prior art as quickly as possible to determine whether a “preliminary” PPA is warranted; however, the low cost of web-based preliminary PPAs may encourage early filing without the higher costs of extensive searching;

(2) Quickly file a “preliminary” PPA based on the innovation as understood at that time which may be the writings and sketches of the inventors;

(3) Later, file additional embellishments via follow-on “preliminary” PPAs as the innovation is refined, which could be the work product of a patent attorney working with the inventor to create a more comprehensive disclosure; and finally,

(4) File a non-provisional patent application claiming priority to all previously filed provisional patent applications with within twelve (12) months of the early “preliminary” PPA, being careful to use consistent terms and define terms as required to take into account the evolving nature of the innovation being developed.