top of page

Why is it equally beneficial to have a provisional patent application approach?

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.” Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.

Starting with a provisional patent application as a way to initiate the patent process is preferable because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a micro entity. Regardless of the filing fee to be paid to the USPTO, provisional patent applications cost less to prepare from an attorney fee perspective because there are no formal requirements, which means we can focus on disclosing the invention in its full detail while still preparing an exceptionally detailed application that costs a fraction of the cost of a non-provisional patent application (i.e., regular patent application).

Many patent attorneys and patent agents will question whether you can really prepare a provisional patent application while spending less time than preparing a non-provisional patent application. Describe whatever you can, file a provisional patent application and work toward perfecting the invention and seeing if there is a market. That is how provisional patent applications are best and why they are a valuable tool for those with a limited budget, which at the end of the day is everyone in the patent space. No one has enough money to protect everything they invent, not even mega-giant tech companies. So you take responsible steps forward to secure rights once you reach the point where you have something patentable. Provisional patent applications are excellent tools for inventors who are continuing their work on their invention. Describe what you have at the moment and file it as a provisional patent application. Then when you are done working on the invention, or before the provisional becomes abandoned at 12 months (whichever is first), file the non-provisional patent application that includes the earlier described aspect of your invention as well as any improvements or additions. Assuming you have filed an appropriate provisional patent application you can market the invention without fear of losing patent rights, generating cash to proceed with development or further patent activities. In other words, the provisional patent application is an interim step along the road to a patent.

In many, if not most or even nearly all, situations the invention as you initially conceive of it will not be the invention that you ultimately want to patent. Many times you will come up with an invention and want to protect it but you know you will need to continue working on it. There are things you want to make better, things you need more time to research and develop and in many cases you are seeking to obtain patent pending status before you have 3D renderings, engineering drawings or even an intermediate prototype. In this context you simply cannot possibly describe everything you will ultimately want to describe because you don’t have the invention complete in its full glory. As you progress forward with your invention you learn more each step of the way. It is best to file a patent application as soon as possible, so consider filing a provisional patent application as soon as your invention is concrete and tangible enough to describe. Then as you make improvements you can file another provisional patent application if your want, or just move to a non-provisional patent application. If you are working on your invention you should not be filing a non-provisional patent application because you cannot add new subject matter to a non-provisional patent application. You can, however, wrap together any number of provisional patent applications that have been filed within the last 12 months when you file your non-provisional patent application. Thus, provisional patent applications are absolutely ideal when you have something that could be protected now but you are continuing to work on refining, perfecting and supplementing the invention.

Another key benefit of a provisional patent application is that the Patent Office will not do anything with the provisional patent application unless and until you file a non-provisional patent application claiming the benefit of the priority of the provisional patent application filing date. This means no more PTO fees and no additional attorney’s fees unless and until you want to move forward. Thus, you can lay the foundation for obtaining a patent, have a “patent pending” and conserve funds in the process. In my judgment the benefits are enormous. Critical to remember, however, is that a carelessly prepared provisional is a complete waste of time and money.

Accordingly, if you do elect to file a provisional patent application you do need to understand that a provisional application remains pending at the Patent Office for only 12 months from the date it is filed. I know this was mentioned above, but it is worth mentioning again because it is an absolute hard and fast deadline that can be extended only in the most rare and extraordinary circumstances. Yes, virtually all deadlines at the U.S. Patent Office can be extended if you are willing to pay enough, and there are some circumstances under which you could claim priority to a provisional application filed up to 14 months earlier, but to claim priority after 12 months and up to the 14 month point the cost is very high — currently $1,700. Entitlement to this additional 2 month period is also very restricted. Therefore, it is critical inventors understand that they realistically have only 12 months to file a non-provisional patent application and not fool themselves into thinking they have 14 months instead.

Of course, a provisional patent application must be understood as nothing more than the first step toward receiving a patent. Ultimately you will need to file a non-provisional patent application in order to obtain a patent in the United States. Still, there are substantial benefits to beginning with a provisional patent application. As with most things in life, however, there are pitfalls that can and do trap the unwary and unknowledgeable.

bottom of page