Understanding US Copyright Basics

A provisional patent application allows for filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. The beauty of the provisional patent application is that it locks in your priority date. In other words, your filing date for any later filed non-provisional ("regular") application will be that of the provisional patent application. Additionally, filing a provisional patent allows the term "Patent Pending" to be applied, which can have significant marketing advantages. Furthermore, the filing of a provisional application is considered to be a patent application, which probably seems obvious, but which is exceptionally important under the patent laws of the United States. This is critical because in the US you can become prevented from filing a patent application if certain things happen more than 12 months prior to the filing of a patent application. For example, if you sell a product for more than 12 months prior to filing a patent application you lose the right to obtain a patent. If, however, you have filed a provisional application less than 12 months after you start selling, then you are fine. So, the moral of the story is that provisional patent applications not only lock in your application date, but they also stop the running of any legal time bars (so-called statutory bars) which could otherwise prevent you from obtaining a patent.

If you need assistance doing this I highly recommend Legalzoom.com's provisional patent service. I have had a working relationship with LegalZoom since right after the inception of the company, and have helped them develop their intellectual property services, so I personally know them to offer extremely high quality for a very reasonable price; indeed at a price that is far lower than you would pay any attorney.

A provisional application for patent lasts only 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (i.e., "regular patent application") during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months. This is because the patent term will expire 20 years from the filing date of the non-provisional (i.e., "regular") application. The importance of this is that you can lock in your priority date with the provisional, apply "Patent Pending", and wait 12 months before you file the non-provisional application. The effect is that you have locked in your priority date for 12 months without the patent exclusivity term beginning to run.

Although a claim is not required in a provisional application, the written description and any patent drawings of the provisional application must adequately support the subject matter claimed in the later filed nonprovisional application in order to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed nonprovisional application. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention.

I am a big fan of provisional patent applications, particularly for individuals or small businesses. Provisionals tend to be cheaper to prepare (because no claims are required) and the filing fee is only $100, which saves you $400 just on the fees due at the time of filing a non-provisional patent application. Furthermore, the Patent Office will not do anything with the provisional until you file a regular patent application claiming the priority of the provisional. This means no more PTO fees and no additional attorney's fees. In my judgment the benefits are enormous. Critical to remember, however, is that a carelessly prepared provisional is a waste of time and money. I have seen what some firms claim pass for provisional applications and they are not worth the paper they are written on. Run, don't walk, away from any attorney who claims they can get you a provisional for $100 or $200. Yes, the provisional is cheaper, but because the attorney does not need to spend as much time. This does not mean that not much time is required. There is a big difference. The specification and drawings need to be complete, broad in terms of what is described and specific to make sure you are meeting all patentability requirements. Cutting corners on the provisional makes it useless.