UPDATED June 29, 2022
The first thing to say is this: there is no such thing as a provisional patent. You can, however, file what is known as a provisional patent application.
A provisional patent application will never itself mature into an issued patent, but in the right circumstance (and done properly) a provisional patent application can be a very useful tool for inventors. This is particularly true now that the United States is a first to file country, which absolutely must be interpreted as inventors needing to file first before disclosing anything about their invention, offering it for sale or using the invention publicly.
But let’s take a step back and start at the beginning.
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent. This was the date on which patent term changed from 17 years from issuance of the patent to 20 years from the earliest filing date of the non-provisional utility patent application. Changing patent term in this way would have lead to a peculiarity though. When you invent in the United States you must obtain a foreign filing license prior to filing overseas, which is most easily accomplished by filing a patent application in the U.S. But if you file a non-provisional utility patent application the patent term clock starts to run. Inventors outside the United States would be able to file a patent application in the country where they lived, which would lock in priority but not start the patent term clock running (because patent term starts based on the filing of a U.S. non-provisional patent application, not the filing of a foreign patent application).
To address this issue, which would have given foreign citizens more rights than U.S. citizens, Congress simultaneously created a provisional patent application, which can be filed by anyone, locks in your priority filing date, but which like a foreign application does not start the patent term clock. Thus, with a provisional patent application, you get the benefit of a priority filing date without the patent term starting.
A provisional patent application also provides a lower-cost first patent filing. For example, the filing fees as of this writing for a small entity are $150 for a provisional patent application ($75 if the applicant qualifies as a micro entity), which compares to $910 for a non-provisional patent application ($405 if the applicant qualifies as a micro entity). For more on fees see USPTO Fee Schedule.
A provisional application for patent is a U.S. national application for patent filed in the USPTO. It allows filing without a formal patent claim, oath or declaration. The focus is on describing the invention as completely as possible, and many formalistic requirements of a non-provisional patent application are unnecessary to satisfy. A provisional patent application also provides the means to establish an early effective filing date in a later filed non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description of the invention.
A provisional patent application has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period can be extended only in extraordinary circumstances. Therefore, an applicant MUST file a non-provisional patent application claiming the priority of a provisional patent application within 12 months. If you miss the 12 month deadline you may in extraordinary cases get an extra 2 months to claim priority to the provisional, but that currently comes with a hefty $1,050 fee (for small entities) and $525 (for micro entities), but that extra 2 months is only applicable if there is a mistake (i.e., clerical mistake such as mis-calendaring) that caused the failure to file within 12 months. So, it is best practice to never believe you have more than 12 months to file a non-provisional patent application claiming priority to a previously filed provisional. The extra 2 months is costly, and difficult to prove legitimate entitlement to.
Although the filing fees of a provisional patent application are less than for a non-provisional patent application it is critically important that inventors understand that a provisional patent application MUST describe the invention as completely in a provisional patent application as is required in the non-provisional patent application. Thus, a carelessly prepared, informal provisional patent application will provide no benefit and likely will be harmful because it can be used as evidence that you did not have a complete invention. Therefore, while there are no formalities for a provisional patent application the invention must be described to the greatest extent possible.
So, why would you use a provisional patent application if you need to describe the invention to the same level as a non-provisional patent application? The best use of a provisional patent application is to establish priority rights as soon as you have an invention that can be patented. In a first to file world you really must have a filing date as soon after conception of the invention as possible. But in many, if not most circumstances, inventors will continue to work with the invention, improve what they’ve invented or work on additional versions of the invention. If you are going to continue working on the invention, a properly filed provisional patent application gives you the peace of mind that you have obtained a filing date with respect to what you have already conceived and allows you more time to continue working on the invention.
The best strategy is to file the provisional as reasonably soon as you can making sure to describe what you have presently with as much detail as possible. Then as you continue working on the invention as you make more advances you may want to file another provisional patent application. You can file multiple provisional patent applications and then within 12 months of the filing date of the first provisional file a non-provisional patent application that claims priority back to each of the provisional patent applications filed within the last 12 months. By doing this you get priority for your invention as close in time to invention as possible, which can be extremely important in a first to file legal regime. You can also wrap all the versions and aspects of your invention together into a single non-provisional patent application.
The aforementioned strategy is a good one because getting an early priority filing date is VERY important. Anything that comes after your priority filing date cannot be prior art. Prior art, which an examiner will use against you when they examine your application, comes from that set of information that is available before you file a patent application. So filing a provisional patent application early and often can be very useful. Of course, you must do it properly and properly with provisionals means you need to describe the invention completely. For more information on describing your invention in a patent application see:
- Tips & Tricks for Describing Your Invention in a Patent Application
- Describing an Invention in a Patent Application
- Working with Patent Drawings to Create a Complete Disclosure
- Patent Drawings 101: The Way to Better Patent Applications
The benefits of a provisional patent application, as well as appropriate usage and pitfalls to watch out for are common topics of discussion here on IPWatchdog.com. To learn more about provisional patent applications please see:
There is No Such Thing as a Provisional Patent — 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. CLICK HERE to Continue Reading.
The Benefits of a Provisional Patent Application — There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.” The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.” CLICK HERE to Continue Reading
The Good, Bad & Ugly: Truth About Provisional Patent Applications — Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention had not ripened past the idea stage at the critical moment the invention was memorialized at the time of filing the provisional patent application. Therefore, it is critically important to understand what is required in a provisional patent application and not to fall prey to those who knowingly or unknowingly prey on unsophisticated inventors. CLICK HERE to Continue Reading
Should I File a Patent Application Before Licensing an Invention? — Without a patent pending you also don’t have anything to license other than an idea that lacks tangible boundaries. While that is not always an impediment to moving forward, the further you can develop your idea the better. The more tangible the more valuable. So an idea is worth something to some people, but an idea that has taken more shape and is really an invention is worth even more. An invention that has been defined in a provisional patent application is worth more, and of course an issued patent takes away much of the risk and questions associated with whether your invention is new and unique. But now we are getting ahead of ourselves. The business of inventing needs to be considered a marathon — not a sprint. Take things one step at a time, proceed deliberately and invest little by little and only so long as it makes financial sense. CLICK HERE to Continue Reading
Justified Paranoia: Confidentiality Before and After Patent Filings — Many inventors will seek to obtain some kind of patent protection so they can stake their claim to their invention. This is a good strategy because when you file a patent application you are articulating your invention and getting on record with a filing date that cannot be taken away from you with respect to whatever is in your patent application. A provisional patent application can be a great first step particularly if you are going to need some assistance later to develop your invention because whatever is disclosed in the application is protected as your invention as of the filing date, assuming of course you ultimately get patent claims issued. CLICK HERE to Continue Reading
Join the Discussion
3 comments so far.
Dr.C.K.SehgalAugust 25, 2016 03:04 am
Provisional patent application provision is only to fix one’s priority over any other competing player in the same technology domain. In US there is a bwnefit for aadditional i year protection term as the 2o years starts from the complete patent application where as in India the 2o years timeline is from the date of filing provisional.
Edward HellerAugust 14, 2016 07:24 am
One thing that most practitioners do not seem to know is that claiming priority to a provisional application occurs under section 119, a section that does not require codependency in the United States patent office in order to claim priority, just like priority claims to foreign patent applications. Thus one can abandon a provisional application and still claim priority to it so long as the priority claim is made within 12 months.
Now why would anybody want to do this?
Well, if a provisional application is filed, that provisional application starts the clock running on Paris convention rights. That provisional application still counts as the first application for Paris convention purposes unless it is abandoned before any subsequent application is filed. This means, a Paris convention application must be filed within 12 months of this first provisional application.
Thus, if one files a U. S. application more than one year after a provisional disclosing the same invention, and then attempts to file a Paris convention filing claiming priority to the second application, that priority claim will probably be invalid unless the first provisional application, the one beyond the 12 month limit, was first abandoned prior to the filing of the second U. S.application, whether provisional or regular.
patentpixieAugust 13, 2016 01:55 pm
Gene, this is perfect. A lot of firms haven’t updated their business models in light of AIA. You spelling it out helps everyone!