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:
- Your Developers Could Be Publicly Disclosing Source Code By Using Third-Party Code Repositories
- How to Be an Effective Advocate When Responding To Examiners
- Matching Patents to Products: Determining Which Patents Will Be Implemented in Real-World Commercial Products
- Strategies for Preparing Infringement and Validity Opinions
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
- Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment
- Simultaneous Invention as Secondary Evidence of Obviousness
- Combating the ‘Dunning-Kruger Effect’ in Inventors
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- How Can I Sell an Idea for Profit? Unlocking the Idea-Invention Dichotomy
- Dear Examiner: I am an Imposter
- Keeping a Good Invention Notebook Still Makes Good Sense
- Patent Pending: The Road to Obtaining a U.S. Patent
- Why do you want a Patent?
- Moving from Idea to Patent: When Do You Have an Invention?
- Protecting an Idea: Can Ideas Be Patented or Protected?
- Investing in Inventing: A Patent Process Primer for Startups
- How to Write a Patent Application
- Filing a patent application is still a smart decision for inventors
- Inventorship 101: Who are Inventors and Joint Inventors?
- Patent Search 101: Why US Patent Searches are Critically Important
- 10 Critical Pieces of Advice for Inventors
- There is no such thing as a provisional patent
- Patent Searches: A Great Opportunity for Inventors to Focus on What is Unique
- Should I File a Patent Application Before Licensing the Invention?
Good luck inventing!