Fenwick & West patent partner Rajiv Patel spoke with Law360 for the article "5 Tips For 1st-To-File Patent Applications, 1 Year In" about the first-to-file patent application process one year after the the America Invents Act (AIA) first established the new process.
Asked about provisional applications, which the article describes as a "placeholder that includes a description of the invention but not formal patent claims," Patel cautioned that they can give applicants a "false sense of security."
"A provisional application that is not properly prepared or evaluated may not cover what you want it to cover," he said.
Patel added that applicants should be aware of the possibility of further scrutiny under the post-grant review process after a patent has been filed.
"You want to make it difficult for the patent office to take up the matter, and solid evidence makes it harder for those aspects to be challenged," he said.
The full article is available through the Law360 website (subscription required).