Patent Law Forum
What are the benefits and drawbacks of filing a provisional application?
The only benefit you should consider when deciding to file a non-provisional or provisional patent application is whether you want to defer the increased filing fees of a non-provisional. This is true as long as you draft the provisional application to be exactly the same as a non-provisional application including the claims. This way when you file the non-provisional application you simply refile the application without adding anything to the specification, thereby avoiding a "new matter" rejection during prosecution or an "invalidity" judgement during litigation. Do not be fooled into thinking you can file something quick and simple (e.g., an invention disclosure document) as a provisional application that you can later augment when filing the non-provisional. If you augment a provisional when filing a non-provisional, you run a high risk of a "new matter" rejection during prosecution, and even if you overcome or avoid this rejection, you will certainly need to defend an "invalidity" argument during litigation. One of the most important tenets in patent law is to never ever add new matter to a patent application, either when filing a non-provisional based on a provisional, or during general prosecution. Draft a provisional application exactly the same as a non-provisional application according to the best practices outlined in this video:
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