A provisional patent is actually a misnomer because a “provisional patent” does not exist. Rather, you can file a provisional patent application in order to get patent priority for your product or invention.
The provisional patent application won’t be your official patent application that will be the basis to grant you patent approval. Instead, it is a stepping stone that allows you to preserve the “filing date” for your patent while giving you some more time for additional research and development.
What Is a Provisional Patent Application?
A provisional patent application is an informal patent application filed with the United States Patent and Trademark Office. It allows you to file an application with less formal requirements and without any type of formal oath or declaration and grants you “patent pending” status.
Importantly, it allows you to reserve an earlier filing date than you might otherwise get if you waited until your patent application was perfect.
You must file a non-provisional patent application within 12 months of filing your provisional patent application. However, substantial research and development can take place in these 12 months that will allow you to be better informed when it comes time to file the non-provisional patent application.
Provisional Patent Applications for Different Types of Patents
There are two main types of patents that you can file provisional patent applications for:
A utility patent is what you typically think of when considering a “patented invention.” This is some type of product or other invention that is considered useful to society. It protects the way something is used and works. A utility patent prohibits others from making, using, or selling your idea without your authorization.
Design patents protect the way something looks. This includes the shape and configuration of something, as well as the surface ornamentation that is applied. In some instances, a design patent can protect both the shape and the ornamentation.
Design patents usually cost much less than a utility patent, and typically are much easier to get than a utility patent. Often, people will pursue both a utility patent as well as a design patent that is based on the underlying utility patent.
Why File a Provisional Patent Application?
Even though you would still need to file a nonprovisional patent application 12 months after the filing of a provisional patent application, a provisional patent application can provide numerous benefits you should consider, especially if your invention is in its early stages of development.
Provisional Patent Applications Preserve Your Filing Date
Most importantly, a provisional patent application reserves what is referred to as your “filing date.” Your filing date is the date you file your provisional patent application with the United States Trademark Office.
Your filing date reserves your priority over the invention. It is very important to obtain the earliest possible filing date that is feasible in your situation because the United States operates under what is called a “first-to-file” system.
Understanding the First-to-File System
A first-to-file system means that the first inventor to file an application to patent an invention has priority for receiving a patent for that invention. This is a change from the historical practice in the United States to grant patent rights to the first inventor under a first-to-invent system.
Thus, it used to be that so long as you came up with the invention first and could prove it, you would have the right to the patent even if someone else had filed an application first.
This is not the case anymore. Under the current first-to-file system, your filing date is more important than ever so you can make sure to stake your claim to your idea and preserve your patent rights.
This is why it’s important for you to file your patent application as soon as it is wise to do so to make sure you preserve the first-to-file status. Once you do, you’ll be able to say that you have a patent-pending invention. Provisional patent applications provide you a mechanism to file and preserve that date without being pressured to get everything perfect and formalized.
Provisional Patent Applications Ease the Cost of Patent Prosecution
Provisional patent applications can also be helpful if you are currently financially strapped. By filing a provisional patent application, you end up spreading out the sometimes high costs of filing for a patent by pursuing your patent in stages.
There are upfront costs associated with drafting and filing both a provisional or non-provisional patent application. But filing a provisional patent application spreads the patent prosecution costs as you seek patent approval because the fees for the provisional patent application are much less than a non-provisional patent application.
Application Filing Costs
The attorney’s fees for drafting both provisional and non-provisional patent applications can be somewhat comparable, depending on your provisional patent application’s level of detail. One way to lower the costs of a provisional patent application is to take a less thorough approach upfront when you are less familiar with the market and your invention’s research and development.
You can later build off of your provisional patent application when it comes time to submit your non-provisional application while incorporating additional information you have been able to learn by having the extra 12 months of research and market assessment.
There are also fees associated with filing both applications with the Patent Office apart from the attorney’s fees necessary to draft the application. A provisional patent application filing fee varies but typically costs about $150-250. These fees are explained in more detail below.
Patent Prosecution Costs
Filing a provisional patent application delays the costs associated with the patent prosecution with the United States Patent Office. The cost of the patent prosecution phase range depending on how complicated your patent claims are and the number and type of inquiries the Patent Office may have for you.
Keep in mind that your patent attorney will be responding to Office Actions issued by the Patent Office and any other inquiries your patent examiner may have as the Patent Office evaluates whether or not to approve your patent. There are often multiple rounds of submissions to the Patent Office before approval is granted.
Filing a provisional patent application will delay the costs associated with responding to these inquiries by at least one year. Depending on your current financial state, or if there is potential for outside financing if your idea is more fully developed, this can be helpful as you take additional time to perfect your invention
Provisional Patent Applications Provide More Time to Refine Your Invention
Filing a provisional patent application preserves your filing date while giving you 12 months to further refine and improve your invention. This additional time can be integral for testing and tweaking your invention so that you can create the best invention possible.
It can also be that this additional 12 months gives you additional insight and understanding about whether your invention is truly feasible to carry out in the long run. It is better to know this information sooner rather than after you have spent ample time and money pursuing the patent prosecution phase.
Provisional Patent Applications Provide Additional Time to Test the Market
Filing a provisional patent application can also be beneficial because it gives you 12 months more to conduct market testing of your invention.
By conducting additional market tests and learning more about the market for your invention, you will be able to make changes that could help increase your market share or better meet your potential customers’ needs. These changes can then be included in your non-provisional application for ultimate approval.
This additional 12 months of testing the market can provide you with valuable data on how marketable your invention will be. This can help inform you whether you want to continue down the costly road of patent prosecution before you are too financially invested.
Provisional Patent Applications Allow More Time to Conduct Patent Searches
One of the key components you must complete before filing a non-provisional patent application is conducting prior art searches. Prior art is essentially any evidence that your patent is already known.
To be considered prior art, the invention does not need to have been fully developed and sold. Rather, if someone has described the invention somewhere or has made something that contains that invention, then it is considered prior art.
Prior Art Searches Explained
Prior art searches, also called patent searches, are necessary to conduct to help confirm whether or not your invention is truly novel. These searches will let you know if others have already obtained a similar patent.
Prior art searches are important because they can help you save substantial time and money because they can curtail the long road of patent prosecution that may end up in a patent denial. Even though it can be upsetting to discover someone else has already started in on your invention, it is better to discover that sooner rather than later.
Prior Art Searches Take Time
These patent searches can take a substantial amount of time when done thoroughly and accurately. You want to conduct as thorough of searches as possible to make sure you have checked all potential places your invention may have already shown up.
The patent examiner assigned to your non-provisional patent application will do the same exercise, so it is important to get out ahead of it and be armed and ready to answer the questions your patent examiner may have.
Having more time to conduct these searches allows you more time to prepare any defenses and explanations as to why your invention is different from another similar one that has already been patented. And knowing what the examiner may find in their search might affect your decision of whether to go to the time and expense of filing your non-provisional patent application.
Provisional Patent Applications Are Not Reviewed by the Patent Office
The United States Patent Office does not review provisional patent applications on their merits. No patent examiner will be assigned to your provisional patent application. You will not need to worry about responding to Office Actions from the Patent Office about your application.
This is helpful because Office Actions often entail substantial back and forth discussion between you and the Patent Office, which can take large amounts of time and money.
Provisional Patent Applications Are Informal
Provisional patent applications are a great idea because they allow you to apply using an informal application format. You also do not need to sign any type of oath or declaration for a provisional patent application.
Your provisional patent application will not need to have detailed claims within it, cutting out a great deal of work.
Essentially, you just need to provide enough information to preserve your patent rights and make sure the invention would be clear to someone with ordinary skill in your field. You will be able to supplement this information later on in your non-provisional patent application.
How to File a Provisional Patent Application
A provisional patent application is filed with the United States Patent Office under 35 U.S.C. §111(b). Here are a few details that must be included in your provisional patent application:
- Cover sheet;
- Written description;
- Drawings (if necessary);
The written description of the invention in your provisional patent application must meet the requirements identified in 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention
Essentially, this statute requires a clear and concise description of the invention and the manner and process of making and using it.
The written description should provide enough details that someone with ordinary skill in your field would be able to make and use the invention based on it. It also needs enough detail so that a person of ordinary skill in your field would be able to recognize the invention in the non-provisional application that you file later on.
Drawings or diagrams of your invention are not necessary for the provisional patent application. However, depending on what your invention is, drawings and diagrams can be very helpful to bolster your written description. They say a picture is worth a thousand words, and that is often the case with patent applications.
Drawings and diagrams can help patent examiners later on in the patent prosecution phase. It’s a good idea to consult your patent attorney to see if these are something that would be beneficial to include in your provisional application.
Along with your provisional patent application, you will need to pay an application fee. These fees are set out in 37 CFR 1.16(d). The fees break out as follows:
- Regular entity fee: $ 300
- Small entity fee: $ 150
- Micro entity fee: $ 75
The United States Patent Office has posted the entire fee schedule for a patent application that provides further details.
No Prior Art Disclosure
No information disclosure statement also called a prior art statement, is necessary for provisional patent applications. This is because provisional patent applications are not actually examined by the Patent Office. This will cut down the work necessary to complete your provisional application.
12 Month Period Cannot Be Extended
It is important to keep in mind that the 12 month period between the time you file your provisional patent application and non-provisional patent application cannot be extended under any circumstances.
That means you must make sure you have your non-provisional patent application on file with the Patent Office before the 12 months is up or you will lose your priority.
Keep in mind that a separate 12-month clock starts even if you have not filed a provisional patent application, but you have otherwise released your invention into the public domain.
If you have published your invention in an article or journal, showcased it at a trade show, or established a Kickstarter campaign to drum up funds for your invention, you may have started your 12-month clock within which you must file a provisional or non-provisional patent application within the U.S. or forever lose the right to do so.
Consider Your Confidentiality
If you are looking to file a provisional patent application and hold off on a non-provisional patent application for some time, it is important to keep your confidentiality in mind.
Oftentimes, when you are exploring research and development for an invention and considering the related market, you may bring in experts or other third parties to help in this research.
These third parties will be exposed to your intellectual property. It can be a good idea to have third parties exposed to your invention to sign non-disclosure agreements or confidentiality agreements. These ensure you protect your intellectual property rights while also getting the benefit of outside expertise.
Filing Without a Patent Attorney
Often one of the main reasons people are often interested in filing a provisional patent application is to cut down on costs. The next question often is, do I need a patent attorney to file a provisional patent application?
The answer is no, you can file a provisional patent application on your own. It is often a good idea to hire an attorney to at least look over your patent application before you file it. It is important to keep in mind, that the priority you get from your provisional will only be as good as it is well written and your invention is fully explained.
You can save on attorney’s fees by writing out your own written description and diagrams, drafting the cover sheet, and assembling everything together. You are the one who knows the invention the best, anyway.
Then you can provide these materials to a patent attorney experienced in intellectual property rights. Your patent attorney can make sure you are not missing key information. A patent attorney can also make sure you are setting your patent application up for success down the road when you enter the patent prosecution phase of the patent application process.