What is a provisional patent application?
So you’re thinking about getting a utility patent, but you’re not sure whether you want to invest in such an expensive endeavor. A provisional patent application (PPA) can be a quicker and cheaper way to start the process and buy some time. The PPA alone will not get you across the finish line. Think of filing a provisional patent application as starting a journey that has a checkpoint. To get to the destination, you must cross that checkpoint by filing a nonprovisional patent application. Since the provisional filing serves as merely a placeholder, the failure to follow through will forfeit your patent rights.
Why file a provisional patent application?
Two of the most compelling reasons for filing provisional applications are speed and costs.
A quick way to get patent-pending with an earlier filing date
To get international patent protection, you must secure a 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 may help you secure a filing date before you publicly disclose your invention.
How much does a provisional patent application cost?
Costs for provisional patent applications vary widely. Fees will ultimately depend upon how much drafting is required. “You get what you pay for” is generally true of provisional applications. Don’t expect to get the full write-up of a nonprovisional for the price of a provisional.
If you pay very little upfront, you may end up with a scant disclosure of your invention. That can be disastrous. Any new matter that gets added later will not benefit from the earlier filing date of the provisional. So you might file a cheap provisional that is practically worthless.
A wiser approach may be to spend about 50% of the cost of a nonprovisional application to draft a provisional application. If and when you decide to proceed with the nonprovisional, you can pay the remaining half of the cost to prepare and file the nonprovisional patent application.
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 nonprovisional application
- product development will undergo multiple iterations with new features being continually added
- upcoming trade show
- upcoming product launch
- 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)
What do you get by filing a provisional patent application?
You get a filing date and patent-pending status. The public will not know what is covered in your filing during patent-pending status because provisional applications are not published. Provisional applications will be made accessible to the public only if the applicant follows up with a nonprovisional application which becomes published around 18 months from the priority date.
The filing date of your PPA serves as a priority date which will benefit your subsequently-filed patent applications that include a priority claim.
A PPA gives you patent-pending status for one year. If you file a nonprovisional application within 12 months of your provisional filing date, your nonprovisional application will get the benefit of your earlier provisional filing date.
One major caveat is that the nonprovisional 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 nonprovisional application will get the later non-provisional filing date.
Will the USPTO review my provisional application?
No, provisional applications are not reviewed by the USPTO. Nonprovisional applications are reviewed. After a nonprovisional 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 nonprovisional application, a provisional patent application does not have to adhere to any requirements. The most important objective of the provisional application is to describe and show your invention thoroughly by providing sufficient details to support your subsequent nonprovisional 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 nonprovisional 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 the risks of filing a provisional patent application yourself?
If you’re writing a provisional patent application yourself, one big risk is that you might leave out certain details that will need to be added later in a subsequent provisional or nonprovisional 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.
Can you file a provisional for a design patent?
No, a provisional patent application cannot support a subsequently filed design patent application. Since design patents are not expensive to file, you should simply file a design patent application if you wish to protect the visual appearance of your product or concept.
Why not file a nonprovisional patent application in the first place?
A nonprovisional application is expensive. Nonprovisional 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 will not be able to claim features omitted from your description.
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