Whenever I speak with inventors I am inevitably asked about the benefit of filing a provisional patent application. I am a fan of provisional applications and do encourage independent inventors and small businesses to start with a provisional patent application. There is no downside to a provisional patent application, only benefits, provided the application filed actually (and adequately) describes the invention. Notwithstanding, it is critically important to understand what a provisional patent application is, and perhaps most importantly what a provisional patent application is not. And first things first — there is no such thing as a provisional patent. Let me explain.
Although there is a popular misconception among inventors new to the field of inventing, the United States Patent and Trademark Office is never going to grant a provisional patent. A “provisional”, as it is sometimes called, is a type of patent application. A provisional application for a patent can be filed at the United States Patent and Trademark Office in order to establish priority of invention, which is critically important given that the United States is now a first to file country. Although the U.S. is not a pure first to file country it is safest for inventors to assume that first to file laws do set up a race to the Patent Office. Therefore, it is essentially in virtually all cases for an inventor to file a patent application first — before anyone else who may also be working on the same invention. This is where a provisional application for a patent can be extremely useful.
A provisional application allows for filing without a formal patent claim, without an oath or declaration, and without any information disclosure (prior art) statement. The beauty of the provisional application is that it locks in your application date and provides the filer with patent pending status for hundreds of dollars less than that filing fee associated with a non-provisional patent application. Once filed the provisional application will remain pending for 12 months before it becomes abandoned. That 12 month period gives the inventor time to decide whether it makes sense to move forward with the expense of filing a non-provisional application.
It is also essential to know that the benefit a provisional provides is only with respect to that which is actually described in the application. A carelessly prepared provisional is a complete waste of time and money! Yes, you can legally say you have a patent pending even with a careless or incomplete provisional patent application, but no benefit will be achieved if and when you ultimately file a non-provisional patent application. Therefore, it is always wise to take proper care to make sure the all aspects of the invention are described in the provisional application. See Completely Describing an Invention.
It is also important to realize that a provisional patent application will never mature into an issued patent, nor does a provisional application protect your invention from copying by others. Thus, it is incorrect to think of a provisional application as creating some type of provisional rights. There is no such thing as a provisional patent. You can file a provisional application as a low cost first step toward achieving a patent, but the Patent Office will never issue a “provisional patent.” You will always need to file a non-provisional patent application in order to obtain an issued patent. If your provisional application discloses your invention completely and clearly the filing date of your subsequent non-provisional patent application will be considered to be the filing date of the original provisional application. If you file a sparse, incomplete or unclear provisional application the filing date of a subsequent non-provisional patent application will NOT relate back to your provisional filing date. Therefore, it is frequently said that a provisional patent is good so long as it discloses the invention with the same detail and specificity that is required of a non-provisional patent application.
For more information about provisional patent applications, their benefits and limitations see:
- The Benefits of a Provisional Patent Application
- The Good, Bad & Ugly: Truth About Provisional Applications
- Provisional Patent Applications the Right Way
If you need assistance I’ve developed an innovative approach that allows inventors to create and file their own provisional applications. The Invent + Patent System™ enables the inventor to drive the application process and stay engaged throughout the process. By answering a series of specific, legally derived questions, the inventor provides extremely detailed information. The Invent + Patent System™ contains both questions and detailed explanation regarding the type of information the question is intending to collect, provides suggested answer templates that you can use to form your answers, and also includes specific examples answers for a variety of technologies taken from issued patents. The Invent + Patent System™ guides you through the creation of the application to ensure that you provide all of the information required by US patent laws for a complete provisional application. The cost to use the system is $99, and typically the fees due to the United States Patent & Trademark Office are $130, assuming the inventor is a small entity. Only $65 if the inventor qualifies as a micro-entity.
For more basic information on patents and invention please see:
- Tips from a Former Examiner on How to Conduct Interviews at the USPTO
- Ten Mistakes to Avoid When Drafting Information Disclosure Statements
- Defanging Descriptive Material Rejections
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Disclosure Requirements in Software Patents: Avoiding Indefiniteness
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
- Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
- Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Errors in Issued Patents as a Measure of Patent Quality
- Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
- Why the Patent Classification System Needs an Update
- Understanding What a Design Patent is Not
- Design Patents: Under Utilized and Overlooked
- Deciding Where to Obtain International Patent Rights
- When to Use the Patent Cooperation Treaty—and Why It’s So Popular
- Why and When Design Patents are Useful
- PCT Basics: Obtaining Patent Rights Around the World
- ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
- Successful After Final Petitions Can Help Advance Prosecution (Part V)
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
Good luck inventing!