Introduction to IP Portfolio Building Part II: Expanding IP Protection

Many companies begin their IP protection journey with a provisional patent application, drawn by its lower cost and relative simplicity. But this step should be taken with eyes wide open: the provisional is a limited and temporary filing tool, not a substitute for a full patent application. It is not appropriate for every situation, and when misused, it can jeopardize future patent rights.

Here we outline how early-stage and growth-stage businesses should approach provisional filings—and when they should be avoided in favor of a complete, non-provisional patent application. We also address how to expand your IP strategy beyond patents, and how to manage layered protection across a portfolio.

A. Provisional Patent Applications: When to Use—and When Not To

A provisional patent application is an optional and temporary filing that allows an inventor to secure a priority date and “Patent Pending” status without the full formality or cost of a non-provisional application. It can be an appropriate tool when a company is still developing the invention or cannot yet allocate budget for a full patent application.

If the invention is ready for patenting and there is sufficient budget, a non-provisional application is always preferred. Why? Because a provisional application must still fully describe the invention in sufficient detail to enable a person skilled in the art to make and use it. If the disclosure is incomplete or vague, later claims in the non-provisional may not be entitled to the provisional’s filing date—and patent rights could be lost as a result.

There are risks to relying on a provisional:

• False sense of security: A poorly drafted provisional may not actually support the claims in a later application.

• Lost priority: If critical aspects of the invention were not adequately disclosed, those features may not be protected.

• No patent rights: A provisional is never examined and will never issue as a patent on its own.

• Disclosure pitfalls: Publicly disclosing the invention before properly filing a follow-on non-provisional can trigger statutory bars in the U.S. and foreign jurisdictions.

  
  

In short, a provisional patent application is best reserved for situations where:

• The invention is still evolving;

• Budget constraints temporarily prevent a non-provisional filing;

• The disclosure can be prepared carefully and thoroughly enough to preserve rights.

  
  

Key Takeaway: A provisional patent application is a tool of convenience—not a full protection strategy. If the invention is mature and ready, and resources permit, a non-provisional application offers stronger and more reliable protection.

B. Transitioning to a Non-Provisional Patent Application

A non-provisional patent application is the formal filing that begins examination at the USPTO and may result in an issued, enforceable patent. It must be filed within 12 months of a provisional application to preserve the early filing date—but companies are advised to file it much sooner, where possible.

Use the provisional period not to delay, but to refine and strengthen your application. This may include:

• Expanding the written description to include additional embodiments and technical variations;

• Adding diagrams and data to support broader claims;

• Revising the specification to address workarounds or known alternatives.

  
  

When filing the non-provisional, it must be complete: it must include formal patent claims, a detailed specification, drawings, and supporting materials such as an inventor oath or declaration and, when applicable, an information disclosure statement identify known prior art.

Key Takeaway: Transitioning from a provisional to a non-provisional is not automatic, and success depends on how well the provisional application was prepared. File the non-provisional as early as possible to reduce the risk of disclosure-related bars and to secure robust protection.

C. Layered Patent Coverage: One Product, Multiple Patents

Companies often overlook the fact that a single product may be eligible for multiple layers of patent protection. Thoughtful IP strategy should consider more than one application when warranted by the technology, design, and business goals.

Common examples of layered protection:

• Utility patents covering multiple aspects of a device, method, or system;

• Design patents protecting unique product appearance or graphical interfaces;

• Continuation applications to pursue broader or alternative claims after an initial filing;

• Separate applications for improvements or new applications of a core technology.

  
  

This strategy is especially useful for protecting platform technologies, modular systems, or products with significant aesthetic and functional elements. Moreover, layered filings make enforcement more flexible and reduce the likelihood that a single adverse decision (e.g., in litigation or examination) will undermine all rights in a product.

Key Takeaway: When appropriate, file multiple patents to protect different facets of a product. A single application rarely captures everything of value, and layered filings increase both strategic leverage and asset value.

D. Expanding Beyond Patents: A Full IP Protection Strategy

No patent strategy stands alone. As your product moves from prototype to market, you must integrate trademarks, copyrights, and trade secrets into your overall IP protection framework.

Trademark protection:

Secure rights in your company name, product names, and logos. Early registration protects against infringement, avoids rebranding, and strengthens your market position.

Copyright protection:

Register rights in software code, web content, designs, and marketing assets. Copyright arises automatically upon creation, but registration with the U.S. Copyright Office improves enforceability.

Trade secrets:

Protect confidential information that gives your company a commercial advantage—such as manufacturing processes, customer lists, formulas, or internal methods. Trade secret rights only exist if you actively keep the information confidential.

Trade secrets and patents are not interchangeable. For example, trade secret protection is ineffective for technology that can be reverse-engineered from your product or made public through marketing or regulatory filings.

Key Takeaway: A comprehensive IP portfolio includes more than patents. Depending on your product and business model, trademarks, copyrights, and trade secrets may be equally important—and sometimes more so.

E. Portfolio Management: Active Oversight and Alignment

Building a strong IP portfolio is not a one-time event. Ongoing monitoring and management are essential to ensure your rights remain protected and aligned with your business strategy.

Consider:

• Renewals and maintenance fees;

• Competitor patent monitoring and FTO analysis;

• Audits to identify under-protected innovations;

• Enforcement or licensing decisions based on business goals;

• Updating coverage as product lines, markets, and technologies evolve.

• 
  

For companies in sectors such as AI, biotech, or clean tech, the IP landscape is changing rapidly. New case law and shifting standards around eligibility, inventorship, and data-driven innovation mean your strategy must remain adaptable.

Key Takeaway: Your IP portfolio is a dynamic business asset. Regular reviews and adjustments are critical to maximizing its long-term value and enforceability.

Coming Next: Part III – IP Protection Outside the USA

In Part III, we’ll explore how to protect IP assets outside the United States, including international patent filings under the PCT, trademark filings via the Madrid Protocol, and jurisdictional strategies for choosing where and when to file.

Questions about your portfolio or next steps? We advise companies at every stage of the IP lifecycle—from first filings to international enforcement. Contact us to ensure your innovation is protected from day one.