Provisional Patent Applications

A Look at The Benefits of a Provisional Patent Application

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 $110, which saves you $430 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 though, namely 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.

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.

I have created an online tool that allows individuald to create and file their own provisional patent applications.  If you elect to use this online tool – The Invent & Patent System – to create your own provisional patent application the cost is $189. For this price you get to use the system, which will help you create your own patent application, and then you receive instructions on how to format the application and file it yourself.  This system has been in use for at least 5 years now, is an excellent way to save money while still getting quality output, but it is primarily a do-it-yourself system. 

When I developed the Invent & Patent System I created answer templates that can be used and multiple technology relevant examples that can be mimicked.  These answer templates and examples, when used, force inventors to provide the critical information that will be required to ensure a complete application.  This works to keep costs down because it is a collaborative effort and you are directing the process and providing the critical invention information rather than paying an attorney to describe what you know best — your invention.

If you are not comfortable creating a provisional patent application on your own, or you feel that your invention is particularly valuable and you want to start the process with professional assistance, I can help.  Send me an e-mail message and we can discuss matters further. I have been helping independent inventors and start-up companies since 1998.  We can typically draft and file a provisional patent applicaton for $1,500 plus the cost of any drawings (typically $200 to $300) and the government filing fee ($110). For computer related inventions, software, Internet applications and some highly complex inventions the cost of a provisional patent application can reach $2,500 plus the aforementioned costs.

Good luck!