Provisional Patent Applications: Patent Application Types and Strategies – Part 2

The most basic type of patent application is a “provisional patent application.”  For both start-up companies and large companies with highly developed patent portfolios, there are many benefits that can be achieved from filing provisional patent applications.  But there are also risks that can be minimized if you are aware of them.

Provisional Patent Application Benefit:   Can give you “Patent Pending” status quickly and inexpensively with time before a full utility patent needs to be filed for priority.

Provisional Patent Application Risk:   Because it can be prepared quickly, it can also be incomplete or missing detail.

TIP:   Consider carefully whether a provisional patent application is right for your situation and if so, take enough time to avoid as much of the risk as makes sense.

Detail:   A provisional patent application has very few content and format requirements and does not require patent claims.  As a result, it can be prepared quickly (and inexpensively) with much of the work being done by the inventor.  The provisional patent application will abandon exactly 1 year from its filing date and is not formally examined by the Patent Office except for some initial clerical formatting and content matters.  Provisional patent applications can be used to:

1 – Get quick “Patent Pending” status with up to 1 year before a utility patent application claiming priority to the provisional needs to be filed.

2 – Delay the larger initial costs for filing a utility patent application.

3 – Give some protection to the extent that the invention is disclosed in the application.

4 – Provide some protection while final development is being done to get the actual product to market or the business off the ground.

5 – Support a claim of invention priority to a utility patent application filed while the provisional application is still pending if the non-provisional application properly claims priority.

In the long term, first filing a provisional application and then later filing a utility patent application will cost more than just filing a non-provisional application, and will result in the patent issuing later than if the utility patent were filed immediately.  One common mistake made in preparing a provisional patent application is that because it is often filed for the purpose of obtaining a fast or low cost patent pending, the invention described in the application is lacking much of the support and broadening language that is usually included in a utility patent application.  This lack of support in the application may cause problems when the utility patent application is filed because the utility patent application can only claim priority to the provisional application to the extent that the same material is disclosed in the provisional application.  If something was missed, there is no priority for that portion.

Consider filing a provisional patent application when:

1 – A quick filing date is needed to protect against an imminent public disclosure or other absolute deadline (file first to protect against losing priority rights).

2 – The market for the product is not yet certain and you do not intend to file a utility application unless you can show the market will support the product sales, or you want to have the sales before you pay for a utility application.

3 – The concept is completed, but the specific engineering and design for the product is not yet finalized and may result in significant design changes or may be improved through initial trials of the product.

4 – The budget for the project is limited, but you expect to have sufficient funds to file a utility application soon.

When deciding to file a provisional patent application, the issues relating to possible problems with provisional applications should also be weighed into the consideration, but some careful planning can reach a fair balance of business realities with legal protection risks.