Provisional Patent Application

What is Provisional Patent Application?

A provisional patent application is unique among patent applications because it is not ever formally examined by a patent examiner.  The provisional application is reviewed to confirm it includes all of the parts needed for an application, but then it just sits in the United States Patent and Trademark Office as a place-holder for an invention.  The ultimate benefit of a provisional application is only realized in relation to a law suit for infringement of an issued non-provisional patent that claims priority to the provisional application.

What’s the Difference between Provisional and Non-Provisional Patent Applications?

Although a provisional application is not examined, it is important to make sure the provisional application has a full disclosure of the invention.  When a later-filed non-provisional application claims priority to a provisional application, the claim of priority is only to the extent that the content of the non-provisional application was included in the provisional application.  That means that if the provisional application only discloses part of an invention and then a non-provisional application is filed later that claims priority to the provisional application and includes more of the invention, the claim of priority and protection provided by the provisional application only extends to those parts that are in both the provisional application and the non-provisional application.  Therefore, it is important to include as much as possible in the provisional application.

How long does a Provisional Patent Application give me Patent Pending?

A provisional patent application has a twelve (12) month lifespan.  If a non-provisional application is not filed within one year of the provisional application filing that correctly claims priority to the provisional application, the provisional application expires and cannot be revived.  Although a provisional application in some situations can be re-filed, the original filing date is lost and the new filing date is the only priority that can be claimed.

Why should I file my patent application sooner?

There are three big advantages to filing your patent application earlier to get an earlier priority date. These can all be achieved by filing a provisional application and include: 

1)  The United States is a “first to file” country, which means that invention priority goes to the first person who files the patent application.  Filing a patent application sooner means you are more likely to file before your competition and get ownership of the invention. 

2)  A patent examiner for a non-provisional patent application can reject the claims of a patent application based on patents and non-patent literature from other inventors that exists before a priority date of the patent application.  The earlier the priority date, the less the pool of patents and non-patent literature that the Examiner has to rely upon in rejecting your patent claims.

3)  An inventor has at most one year from the date the invention is first disclosed or offered for sale to file a patent application or that previous disclosure can be used against them by the Patent Office to prevent them from getting a patent.  If you are close to the deadline, filing a provisional application, which can be prepared more quickly and with less cost than a non-provisional application, can help to protect that invention.

Why should I consider a Provisional Patent Application?

Although there may be reasons to immediately file a non-provisional application rather than first filing a provisional patent application, the most common uses for provisional patent applications include:

1)  Filing an application quickly to get Patent Pending before a public disclosure.

2)  Filing an application on the current status of your invention while you continue to develop improvements to your invention and finalize its development so that the initial stages are protected.  Supplemental provisional applications can be filed to protect each improvement and then all of the provisional applications can be collected together into a single non-provisional application that claims priority to all of the previous provisional applications, within one year of the earliest filing.

3)  Filing an application at a lower cost initially to get Patent Pending while you test the market for whether the new idea is going to be popular and justify the cost of a non-provisional application.

4)  Filing a place-holder application to establish Patent Pending while you approach investors to see if the investment market is interested in your idea and wants to fund the development and non-provisional application costs.

5)  Filing an application to establish Patent Pending while you continue to research the market and see what other similar inventions someone else has already invented.

Whatever your reason for filing, a provisional application provides a market advantage, a degree of protection, and can help build a solid foundation for your intellectual property rights and future sales market.

Please contact a qualified professional at Booth Udall Fuller, PLLC with any questions you may have about filing receipts, provisional patent applications, or any of your intellectual property protection or strategy needs.