One reason I like to suggest starting with a provisional patent application as a way to start the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $100, which saves you $400 when compared to the filing fees for 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 complete 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.

The reason that cutting corners makes a provisional patent application worthless is because in the United States in order for a patent application to be useful to ultimately lead to the protection of an invention the application must be complete as of the time of filing.  This leads to a critical question — what does it mean for an application to be complete?  In general terms, a patent application will be considered to be complete when the invention is described so that someone else familiar with the technology could both make and use the invention having only read the patent application that is filed.  In other words, your patent application needs to explain the invention with as much detail as possible.  Essentially, you want to provide a description on par with the level of detail and explanation that would be included in a good instruction manual that describes both use and making of the invention.

Anything that is not included in a patent application is not considered to be a part of your invention.  For this reason you may hear patent attorneys explain that a provisional patent application is helpful to protect whatever is included in the application.  Said another way, the provisional patent application is only as good as the level of detail you include, which is why you want to not only describe your invention but also any possible alternatives and variations.  Another critical thing to remember is that alternatives and variations can be included in an application even if they are not optimal, and even if they do not work very well.  Thus, you need to think of your invention not only as what works best, but what works; no matter how crudely.  The reason is because if someone copies an inferior version of your invention you would still like to prevent them from doing that, but you can only prevent such copying if your patent application covers the version being copied.

If you do elect to file a provisional patent application you do need to understand that a provisional application will remain pending at the Patent Office for only 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended for any reason. 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.

Many people ask why would you bother filing a provisional patent application if you just have to file a non-provisional application within 12 months. One of the primary motivations for most individual inventors is the fact that initial cost of filing is dramatically reduced.

In addition to the lower initial cost of preparation and filing (which allows you to spread out the investment in a patent), by filing a provisional patent application first, and then filing a corresponding non-provisional patent application that references the provisional patent application within the 12-month pendency period, a patent term endpoint is effectively 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 filing date with the provisional application, while at the same time you are apply to apply the coveted term “Patent Pending” to your invention and/or products. This is important because you cannot use the term “patent pending” or “patent applied” legally in the U.S. unless you do actually have some kind of a patent application on file with the Patent Office. You can then wait the full 12 months before you file the non-provisional patent application, which means you have a full 12 months to market your invention and decide whether it makes sense to move forward with a non-provisional patent application. The effect is that you have locked in your priority date for 12 months without the patent exclusivity term beginning to run, and you have only invested a fraction of what would be necessary to start with a non-provisional filing.

If you do file a good, strong and properly descriptive provisional patent application, the filing date for any later filed non-provisional (”regular”) application will legally be considered to 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 patent application less than 12 months after you start selling, then you are fine. So, the moral of the story is that a provisional patent application not only locks in your application date, but will also stop the running of any legal time bars (so-called statutory bars) which could otherwise prevent you from obtaining a patent.

In terms of what you need to file, although a patent 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 of your invention in order to be useful later to establish priority. What this means it that 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.

A question that I am frequently asked is whether a professional patent search should be performed prior to filing a provisional patent application. I have known inventors who will just file a provisional patent application first without a search and then do a search prior to filing a nonprovisional patent application, and I have known inventors to do a search prior to a provisional patent filing. It is all a matter of preference and timing. Given that you can file a provisional patent application for much less than a nonprovisional application, some will just move forward to get a filing so they can immediately protect their rights and have the ability to use the terms “patent pending.” In an ideal world, however, you would first do a patent search. Remember, the patent search will not only let you know whether moving forward makes sense, but will also let you know what is the true inventive difference between your invention and what is known. Knowing this so-called “point of novelty” will let you better describe your invention. Given that the first filing is critically important, if time and finances allow you should do a patent search first. If that is not possible, at the very least do the best search you can do yourself. For more on that take a look at Patent Searhing 101 where I explain how to do your own comprehensive search.