Filing for a patent can be a costly endeavor, and many inventors are curious to know what kind of protection they can secure before actually applying for a patent with the United States Patent and Trademark Office (USPTO).

Before March 2013, patent law in the US operated on a “first-to-invent” basis, meaning that whoever invented and diligently practiced an invention had the right to be granted its patent, regardless of who filed for the patent first.

This offered inventors decent pre-patent protection: if they records showing the dates and information related to the invention’s conception and reduction to practice, they could be awarded the rights to the patent.

But that changed with the America Invents Act of 2011, which changed the US patent system from “first-to-invent” to “first-to-file.” The act was passed in order to make the patent process more transparent, and to reduce conflicts between US and foreign patent processes.

In the process, however, it significantly changed how pre-patent protection worked. No longer were inventors granted the right to a patent just because they invented it. Now, the first inventor to file a patent receives the right to the patent.

How Does This Affect Pre-Patent Protection?

The “first-to-invent” law made it easier for inventors to test the commercial sustainability of their products before filing a patent, potentially saving them time and money on something that wouldn’t be profitable.

In the “first-to-file” process, inventors must file a patent right away in order to secure their rights to the invention. So even if Inventor A created a product first, if Inventor B files for the patent first, the patent will go to Inventor B.

This changed the patent industry significantly. It reduced the amount of time an inventor had to test an invention’s viability, and made filing a patent more of a requirement than ever. It offered more transparency and clear-cut regulations, but it also meant a greater barrier to entry for inventors.

Essentially, there is no real “pre-patent protection” that offers the same level of security as actually filing a patent. However, there are still ways inventors can get affordable protection immediately for their inventions.

Provisional Patent Applications

Inventors looking for protection at a lower cost can file a provisional patent application. This provides a one-year grace period that the inventor can then use to determine the marketability of the invention. Though it still costs money to file a provisional application, it’s not nearly as expensive.

The invention also receives immediate “patent pending” status once the provisional application is filed. This allows inventors to tell other parties that a patent has been filed, and that competitors may be liable for damages if the product is created and sold – but only once the patent has been granted.

It should be noted that once the one-year period is up, the inventor must file a nonprovisional patent application, or the patent will expire.

With this in mind, filing a provisional patent application is the only pre-patent protection you can get. It’s also a good idea to draft a non-disclosure agreement (NDA) for any parties you share your invention with, whether its details, images, prototypes or anything else related to the product.

Do You Need to Protect Your Invention?

With this change in patent law, protecting your invention as soon as possible is key. Whether you want to file a provisional patent application in order to test your invention’s market, or file a regular patent application right away, you’ll need assistance getting the protection you need.

When you need to streamline the process and give your invention the best possible protection, call the JacksonWhite intellectual property law team. They will help you decide what options are best for your product, and the ideal way to protect your intellectual assets.


Call JacksonWhite at (480) 464-1111 to discuss your Intellectual Property case today.

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