What is a provisional patent application?

First off, there’s no such thing as a “provisional patent.” There’s only a provisional patent application (sometimes referred to as “PPA” or simply “provisional”). A provisional is a utility patent filing that opens the door to obtaining utility patent rights. A provisional is temporary in nature and ultimately useless if you fail to follow through with filing a timely non-provisional application. If you think of a provisional patent application as a first door, then the non-provisional application is the second door that you must open in the following twelve months. A provisional is essentially a placeholder that buys you time. Let’s delve into how to draft a provisional application.

Why file a provisional patent application?

In order to understand what makes a good provisional, you must first recognize its purpose. A provisional application gives you a filing date and patent pending status for one year. If you convert to a non-provisional patent application within that year, your non-provisional application will be back-dated to your earlier provisional filing date which is called the “priority date.” Since this back-dating benefit applies only to content disclosed in the provisional, any new subject matter added to the non-provisional does not benefit from the priority date. If you don’t convert, then your provisional will be abandoned and inaccessible to the public.

How to write a provisional patent application

Let’s discuss what makes for a solid provisional patent application.

Discuss the problem you solved

All ideas originate from a problem, concern or issue that you were trying to solve. While a description of the problem is not critical to getting a patent, it often helps in fleshing out the description of the solutions.

Identify the features that make your concept unique

Assuming existing products (aka “prior art”) inadequately address the problem, identify the new features that make your concept unique. If it helps, try completing this sentence: My invention is the first ________________. The bulk of your write-up should focus on those new features.

Be broad and narrow in describing each new feature

A robust provisional is one that provides both breadth and depth on each significant feature of your invention. For example, say you have an idea for a consumer product with new features X and Y. You should discuss each feature in gory detail. Talk about each structure, dimension, its relationship to other components, what it does and doesn’t do, what it includes and omits, etc. Don’t worry about your description being too limiting because the claims, not the description, will ultimately define the scope of your patent rights.

At the same time, you can also explain that features X and Y are not limited to the specific examples, or embodiments, shown and described. Discuss variations in structure and function that might also accomplish the same result.

Ask yourself tough questions

It has become increasingly common for the Patent Office to reject utility patent applications on the grounds of obviousness – namely, that it would have been obvious to a person of ordinary skill in the art to take a prior art product and combine/add/delete/modify it to arrive at your claimed invention. Therefore, you can strengthen your provisional by discussing reasons why it would not be obvious to come up with your invention (e.g., folks have always been doing things a certain way and would not think to do it my way because . . ., etc.). You can discuss hurdles, challenges and non-obvious factors that might cause others to stay away from your solutions.

Plan ahead for the non-provisional application

Make sure to calendar the 1-year deadline for filing a non-provisional and any foreign patent applications. Our firm not only calendars this date in our docketing system for our clients, but also provides email reminders to clients on a regular basis well in advance of the deadline.  To give your patent attorney sufficient lead time, you’ll want to plan on making a decision at least as early as three months from the 1-year anniversary of the provisional filing date. So, make the most of the months following the provisional filing so that you’ll have sufficient financial resources to proceed with the non-provisional.

If you have developed new features or improvements that were not included in your provisional as filed, you should quickly follow up with a either a subsequent provisional or the non-provisional so as to obtain the earliest possible filing date for the new subject matter.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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