First to File: Patents for Today's Scientist and Engineer

Chapter 10 Selected Topics in Patent Strategy

Developing a patent portfolio is itself a business strategy, but strategy also plays a part in deciding what to seek patent coverage for, when and how to seek it, when and against whom to assert it, and how to defend it when its validity or enforceability is challenged. Strategic decisions are made from the time of filing a patent application through the time that the application spends in the PTO prior to grant and throughout the life of a patent after grant. Inventors, employers, attorneys, and investors will all benefit from well-thought-out strategies, as will anyone seeking to derive value from or defend a patent. This chapter addresses two acts performed at a patent's earliest stages that involve strategic planning. These stages are the preparation and filing of a patent application, and the strategic acts are the use of provisional patent applications and the drafting of claims.

10.1 Provisional Patent Applications

The filing of a provisional patent application prior to a utility patent application is probably the strategic tactic most commonly used by inventors and their employers. A provisional patent application is a document containing a description of an invention and filed in the PTO but not processed by the PTO other than being assigned an application number and filing date. If a utility (nonprovisional) patent application on the invention described in the provisional is filed within a year of the filing of ...