I am frequently asked about the benefit of filing a provisional patent application. I am a big fan of provisional patent applications and encourage independent inventors, small businesses and universities to start the patent process by filing a provisional application whenever possible. In fact, now that the U.S. is a first to file country the best practice is to file a provisional patent application as early as feasible, and you also probably want to file multiple applications as your invention continues to take shape. Early and often is the best provisional patent filing strategy because there is real risk to waiting to file a patent application. You want — you need — that earliest priority filing date that you can get.
Having said this, it is important to understand what a provisional patent application is, what benefits are provided and perhaps most importantly what a provisional patent application is not. First and foremost, there is no such thing as a provisional patent. It is absolutely critical to understand that a provisional application will never mature into an issued patent! Ultimately, if you are going to want to obtain a patent you will need to file a non-provisional utility patent application. Thus, a provisional patent application is best viewed as an economical first step on the path to a patent.
If a provisional patent application will not mature into an issued patent why would you file it? First, filing a provisional patent application is much cheaper. The fees due to the United States Patent and Trademark Office (USPTO) when you file a provisional application as of the time of writing for a small entity are $130 ($65 for a micro entity). For a non-provisional patent application the fees to the USPTO jump to a minimum of $730 for a small entity and $400 for a micro entity.
A provisional patent application allows for filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. In fact, there are virtually no formalities required in order to file a provisional patent application, which means that it is almost always possible to file a provisional application paying less in attorneys fees compared with a non-provisional patent application. For one thing, the most appropriate use of a provisional is when you are continuing to work on your invention and are not yet complete. File on what you have now to establish rights as soon as you can. Continue working on your invention and then later if the project continues to make sense file the comprehensive non-provisional patent application. After all, you can file serial provisional applications to add to your invention, but once you file a non-provisional patent application you are locked in and the only way to add description or information would be with another non-provisional filing, which can get really expensive quickly for most inventors and truly small businesses.
Undoubtedly some attorneys will vociferously disagree and say the only way to move forward is to spend large sums of money to prepare a comprehensive provisional patent application. Is that good legal advice? Yes. Is that good business advice? Not generally. But the interesting thing about many attorneys who tell you what you need to do is they will advise you as if money is not a finite resource. As a serial entrepreneur myself I know first hand that money is always a finite resource for inventors and entrepreneurs. Even well funded start-ups are concerned with their burn rate, which is the rate at which they go through their cash reserves. The trick is to be business responsible as an inventor. You have to adequately describe the invention (see here, here and here) focusing on the core technology, but the truth is that it is absolutely possible to prepare and file a worthwhile provisional without busting your budget.
So let’s talk truth. Is it better to spend more time (and therefore money) drafting at the provisional patent application stage? Yes. It is always going to be true that the more time you spend the better and more detailed the patent filing with be. But a provisional application is almost always about protecting what you have at the moment to the best, most economically reasonable extent possible. You probably don’t even know whether there is a market for your invention at this point, for example. So spending an appropriate amount of money to file something reasonable makes sense. Spending recklessly as if money grows on trees and have no budgetary constraints normally does not make sense.
Now let’s talk about something you should not do, which is do what many in the industry refer to as a cover sheet filing. Not that you ever want to do it, but you could literally download the USPTO cover sheet and attach it to anything and file. I’ve even seen inventors who have just downloaded the cover sheet, paid the fee and filed without attaching anything. What do they have? Absolutely nothing! A provisional patent application is only as good at the description of the invention that is attached! But if you filed a single page with a single paragraph describing your idea you would have a provisional patent application that is now pending. Of course, the patent application is only going to be useful because there can’t possibly be sufficient details in a single paragraph. Therefore, I do NOT recommend just attaching a cover sheet to any random set of papers. Such a filing would allow you to say you have a “patent pending,” but that patent pending would almost certainly be worthless. Even though there are no formal requirements with respect to describing your invention in a provisional patent application, in order to be a useful priority document you have to completely describe the invention in the filing.
But let’s assume you are doing what you are supposed to do. You file a provisional patent application of appropriate depth and description. The beauty of the provisional patent application is that it will now lock in your application date and provides you with “patent pending” status. You now have 12 months to decide whether it makes sense to move forward with the expense of filing a non-provisional application. As already mentioned, you can file subsequent provisional patent applications that more completely describe the invention, perhaps describe new versions of the invention you’ve come up with, or just provide more detail that you’ve learned along your invention journey. You can then claim priority to each of those previous provisionals filed within the 12 months prior to the filing of your non-provisional patent application.
Finally, it is also critical to understand that a provisional patent application does not protect your invention from copying by others. Remember, there is no such thing as a provisional patent. You will not obtain exclusive rights until a patent issues, which won’t possibly happen until after you file a non-provisional patent application that has been reviewed and allowed by a patent examiner. Thus, it is incorrect to think of a provisional patent application as creating some type of exclusive right. There is no such thing as a provisional patent, period. You can file a provisional patent application as a low cost first step toward achieving a patent, but the Patent Office will never issue a provisional patent.
I always tell inventors that if they can afford professional assistance they should work with a patent agent or patent attorney. OF course, for many that is not an option. If it is either do it yourself or abandon your dream I invite you to consider an innovative approach to preparing provisional patent applications that I developed to teach law students how to write patent applications. It has been successfully used by many thousands of do-it-yourself inventors over the years. The Invent + Patent System™ enables the inventor to drive the application process by answering a series of specific, legally derived questions, which allows the inventor provide extremely detailed information. In essence, the Invent + Patent System™ will guide you through the creation of the application.
Good luck inventing!
Join the Discussion
11 comments so far.
tifosoMay 29, 2016 04:07 pm
Due to issues of liability, just about everything you did will have to be redone. Without repeating all the work, there is no way to know if you left out something critical or added something you should not have. You will pay for all that work. Since that probably does not appeal to you, you may have trouble find an attorney to finish the project.
BTW, an attorney is prohibited from contracting that there will be no liability.
JohnMay 19, 2016 03:33 pm
I filed a provisional patent myself after reading endlessly on USPTO EFS web site. I did all the registering as a filer. I went through all the steps, but I didn’t put all my pertinent information about my product on the provisional like I should have. Now I only have a several months till the provisional runs out. I have done most of the patent search myself. I have the detail specifications of the product. Someone did approach me to purchase said “Idea”. I’m looking for help through the law school IP clinic’s now. My question for IP attorney’s, “How do they react when the inventor has done most of the preparation work?”
Victor SierraMarch 23, 2016 03:26 am
I think the provisional patent is beneficial for small entity as they need some time to improve invention and collect funds for non-provisional. Big companies like Google should not be a part of provisional patent application, because they have funds and innovative workers. They don’t need 12 month for collecting funds and improve invention. So, they directly apply non-provisional patent application.
Sheri HigginsMarch 7, 2016 03:41 pm
What a great article and very sound advice. I am a patent attorney and charge clients- especially individual inventors- a very small fee to draft and file a provisional application compared to most other law firms. I know that most people don’t have thousands of dollars, so it is better for me to charge a lot less, while still ensuring that a quality product gets filed to set it up for filing a non-provisional.
Another aspect is to file a provisional before trying to sell the product. This allows an inventor time to test the market while still complying with the new AIA rules. Thank you for such a well-written article explaining the pitfalls of provisional applications.
Gene QuinnMarch 7, 2016 03:31 pm
I appreciate your comment, but I’m not sure how you could have actually read this article and come to the conclusion that the article does not discuss the importance of fully and completely describing your invention in the first filing. In fact, that is discussed throughout the article, and the importance of priority is explained as well. For example, the article says: “I do NOT recommend just attaching a cover sheet to any random set of papers. Such a filing would allow you to say you have a ‘patent pending,’ but that patent pending would almost certainly be worthless. Even though there are no formal requirements with respect to describing your invention in a provisional patent application, in order to be a useful priority document you have to completely describe the invention in the filing.”
You say it is “even better advice to get an attorney to help.” Saying that makes me 100% sure you didn’t read the article because once again I explain that in the article as well. Please see in the article where it says: “I always tell inventors that if they can afford professional assistance they should work with a patent agent or patent attorney.”
I appreciate you taking the time to comment, but in the future it would be more productive if you actually read the article before you comment.
Mark MilhenchMarch 7, 2016 03:17 pm
‘Tis a good article with points well made, but it neglects to mention that if you fail to identify “the invention” in your first filing you may well have priority problems if you later try to file outside of the US, in particular in Europe.
Best advice is to ditch the whole provisional nonsense and file a proper patent application with claims directed to the invention you want to protect. Even better advice is to get an attorney to help you do this.
AnonMarch 6, 2016 11:36 am
Night Writer @ 4,
The “delay effect” – you are correct as to that real world effect.
But I fear that the alternative – that examination for establishing the propriety of any reach back in time from a non-provisional to the provisional during the examination of the non-provisional would fare even worse than the other aspects (directly) of the non-provisional in the proving grounds of the courts and the post-grant re-do’s.
Night WriterMarch 6, 2016 10:58 am
A guess the real problem with provisional patent applications is that they don’t matter until licensing or litigation. Then they matter.
tifosoMarch 6, 2016 08:46 am
The dark side of provisional patent applications is that many of scam companies who, on TV and elsewhere, offer to obtain patents for inventors do little more than make a cover sheet filing for a provisional application.
because there are few requirements, almost anything goes. One such company offered $100. in legal fees to prosecutors for such a filing. How much time can be spent preparing a good application? P T Barnum lives.
BennyMarch 6, 2016 05:26 am
If you are in the international market you might like to take into account the fact the your provisional application is not searchable prior art. Should your competitor file an application outside the US within a year of your provisional, you may well see the rights to your invention granted to others in certain jurisdictions.
AnonMarch 5, 2016 10:31 am
“A provisional patent application is only as good at the description of the invention that is attached! ”
I will suggest that I am one of those that favors (strongly) a much more thorough writing of provisional applications – including the writing (albeit perhaps not the submission) of claims.
The reason has to do with what can (or will) carry over into any vehicle that can be used in a court of law to protect the innovation. Writing a “naked” application typically will not result in something that can support claims – even later different claims. The writing of a patent application simply is not like a technical specification, because at its most immediate use, a patent application is a legal rather than a technical document.
Yes, the “technical” must be there – to a sufficient degree. But there are just too many traps for the unwary (and too much court-produced “patent profanity”) to think that “technical” is the primary driver of the legal result aimed for.