Should I File a Provisional Patent Application?

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Rock Formation in Oceanside, Oregon. Copyright 2018 Dave Bourgeau, All Rights ReservedProvisional patent applications are a lower-cost, quicker way to establish a filing date for your invention. So shouldn’t everyone file one?

As always, the answer turns out to be “it depends.”

What is a Provisional Patent Application?

A “regular” utility patent application — one that gets examined at the U.S. Patent Office —  is known as a nonprovisional patent application (catchy, I know). In contrast, a provisional patent application does not get examined. It is merely a placeholder document that expires in twelve months. During that twelve months, you must file a nonprovisional version of the application, or you will lose your filing date. Why does that matter? It matters because the examiner will look at everything before that filing date when searching for prior art. So, the earlier your filing date, the less potential prior art you have to deal with. Patents are first-come-first-served. You can also think of it as a race to the Patent Office. In general, the first person who invents something and files a patent application (ANY patent application) will be eligible for a patent on that invention. There’s no prize for second place.

So what’s the catch? Why wouldn’t you always go with the quicker-to-complete option? Well, the provisional application only functions to cover the material it contains (in its written description and in its images). When you go to file your nonprovisional application later, any claim that has support in the provisional application will be entitled to its earlier filing date. Any claim that does not have support in the provisional application will get the later filing date of the nonprovisional. That means your provisional needs to be as thorough as you can make it.

What Are the Benefits of a Provisional?

I’m assuming you are in a position where a patent application is advisable in the first place. With that in mind, there are several benefits to filing a provisional application, as compared to a nonprovisional.

  1. It generally costs less to prepare. Mainly because of items 3-5. That means you can do it more easily, in terms of budget, and that you can buy yourself 12 months to decide whether to proceed with the next step.
  2. It generally takes fewer days to prepare. Mainly because of items 3-5.
  3. The provisional does not need to contain formal claims.
  4. It does not require formal illustrations.
  5. It does not require formal numbering of components.
  6. It does not have a mandatory format.
  7. The filing fees at the USPTO are much lower. Generally in the range of $150 instead of $800.
  8. There are no downstream costs. The application simply sits there for twelve months.
  9. Prosecution costs (the costs of examination-related activities) are pushed out twelve months into the future.
  10. It’s confidential. Provisional applications are not published. If you abandon the application, it will remain secret. If you file a nonprovisional based on it, the provisional will become publicly available after 18 months.
  11. It can, sometimes, reduce the cost of the later-filed nonprovisional patent application. This is because some of the work will already be completed. However, this happens less often than you might expect.
  12. You can take the twelve months to further develop and refine your invention, then file a nonprovisional that includes the updated version of your invention. You should consider filing additional provisionals along the way, to supplement the original one. Several unexpired provisional applications can be wrapped into a single nonprovisional (and vice versa, by the way).
  13. Like a nonprovisional, it preserves your right to file anywhere else in the world. As long as you do it within 12 months.
  14. You can legally claim that you have a “Patent Pending” as soon as you file.

What Are the Drawbacks of a Provisional?

Despite all of the great benefits listed above, there are several things you should consider before going ahead with a provisonal application.

  1. It adds cost to the overall patenting process, because you are filing an additional application. You can go straight to a nonprovisional if your invention is ready and you have the budget for it.
  2. It adds time to the overall patenting process. Filing a provisional won’t make your patent expire sooner, but it will push back the time at which an examiner starts reviewing your patent claims. You’re basically filing a placeholder that tells the Patent Office “give me a date, but then let’s wait a year.”
  3. If you aren’t careful, you can forget that your later development wasn’t mentioned in the provisional application. That means you aren’t yet covered for that new development. This isn’t a huge deal in the US, but other countries require that you file a patent application before you go public with anything. So, before you go public (e.g., by selling your product or demonstrating it at a trade show), make sure everything about your invention is covered in a patent application that has already been filed.
  4. It pulls forward your deadline for filing any international patent applications. You must file in foreign (non-US) countries within twelve months of your first patent application, regardless of whether that’s a provisional or a nonprovisional. Filing a provisional means your deadline in both the United States and everywhere else in the world is now the same: one year from the filing date. That changes the budgeting considerations and also might mean you have to decide on international protection before you have a lot of information on how your invention is doing (both in the market and at the Patent Office).

Conclusion

If you’re at the point where you’re considering whether to file a provisional patent application, talk to your patent attorney about the factors outlined above. Provisional applications are often a great option, depending on where you are in the invention process. As always, feel free to contact us if you have any questions.

 

Blog Post © 2018 Kolitch Romano

Photo © 2018 Dave Bourgeau (Oceanside, Oregon)


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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.