What is a provisional patent application?

A utility patent, and not a design patent, is the end goal of a provisional patent application. As implied by its name, filing a “provisional” application alone will not get you a utility patent. It is a temporary placeholder that requires you to follow up with a timely non-provisional application.

What do you get by filing a provisional?

You get a filing date and, thus, patent-pending status. The public will not know exactly what is covered in your filing during patent-pending status because provisional applications are not published. Provisional applications are made accessible to the public only if the applicant follows up with a non-provisional application which becomes published around 18 months from the priority date.

The filing date of your provisional serves as a priority date which will benefit your subsequently-filed patent applications that include a priority claim.

A provisional gives you patent-pending status for one year. If file a non-provisional application within 12 months of your provisional filing date, your non-provisional application will get the benefit of your earlier provisional filing date.

One major caveat is that the non-provisional application gets the benefit of the earlier priority date only to the extent of the subject matter that was included in the provisional application. Any new subject matter added to the non-provisional application will get the later non-provisional filing date.

Why file a provisional patent application?

Two of the most compelling reasons for filing provisional applications are speed and costs.

Filing a provisional application quickly

In the race to the Patent Office, speed matters. You want to get the earliest possible filing date so that other patent applications will not be used against you as prior art.

If you’re contemplating international patent protection, you must secure a patent filing date prior to any public disclosures. So if you’re thinking of disclosing your concept at an upcoming trade show or product launch, promptly filing a provisional application gives you a filing date before your invention is disclosed to the public.

Filing a provisional application inexpensively

Costs for provisional applications vary widely, depending upon how much drafting is required from a patent attorney/agent. “You get what you pay for” is generally true of provisional applications  – don’t expect to get the full write-up of a non-provisional for the price of a provisional.

When would it be appropriate to file provisional patent applications?

It may make sense to file provisional patent applications under the following circumstances:

  • cannot yet afford a non-provisional application
  • product development will undergo multiple iterations with new features being continually added
  • upcoming trade show
  • upcoming product launch
  • upcoming meeting with potential buyers, investors, customers, vendors, partners, hires
  • concern over competitors applying for similar patents
  • potential prior art accumulating each day you postpone filing a patent application (e.g., competitors launching similar products)

Will the Patent Office review my provisional application?

No, provisional applications are not reviewed by the USPTO. Non-provisional applications are reviewed. After a non-provisional application is filed, a patent examiner may review your provisional to see if certain claimed subject matter was disclosed in the provisional in order to give the claim an earlier effective date (so that potential prior art with a later date can’t be used against you).

How to write a provisional patent application

There are no strict formats or rules regarding the content of a provisional application. You can include a combination of written text and visuals (e.g., sketches, photos, drawings, diagrams, etc.). Unlike a non-provisional application, a provisional patent application does not have to adhere to any requirements. The most important objective of the provisional application is to disclose your invention thoroughly by providing sufficient details to support your subsequent non-provisional application.

What are key deadlines to calendar after filing a provisional?

A provisional patent application expires in 12 months. Therefore, provisional patent applicants must remember to file a non-provisional application within one year of the provisional filing date. This 12-month deadline also applies to any desired international patent applications. A provisional patent application cannot be extended or renewed.

Here’s a helpful USPTO guide on provisional patent applications.

What are risks of filing provisional patent applications?

If you’re writing a provisional patent application, one big risk is that you might leave out certain details that will need to be added later in a subsequent provisional or non-provisional application. This omission of details will affect your priority date since new matter added to a subsequent filing will not the benefit of the earlier filing date of the provisional application.

If a provisional application is scant on details, the value of the filing may be marginal. So keep in mind that the value of a provisional application will depend on the content included in the filing.

Why not file a non-provisional patent application in the first place?

A non-provisional application is expensive. Non-provisional applications must follow a strict format and include claims that are proper not only in form, but also in substance. The way claims are drafted differs drastically from the way your invention is described through the rest of the written specification. If your claims are too narrow, you may end up with a worthless patent. If your written specification is deficient, you won’t be able to claim features which were omitted from your description.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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