Provisional Patent Applications

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What is a provisional patent application?

A provisional patent application is a legal document that when filed with the United States Patent and Trademark Office (“USPTO”) establishes an early filing date for an invention.  A provisional application will not actually mature into an issued patent unless an applicant files a non-provisional application with the USPTO within one year of the filing date of the provisional patent application. However, a provisional patent application does provide several advantages and may be a useful tool to many businesses and individuals.

What are the advantages of a provisional patent application?

One advantage of filing a provisional patent application is that it establishes a filing date for an invention.  An early filing date is important to an applicant because since March 16, 2013, the United States and every other country in the world operates under a first-to-file system.  A first-to-file system is a term used to describe a legal concept that defines who has the rights to an invention. In a first to file system, the patent rights, and therefore right to exclude others from making, using or selling the invention, is granted to the first person who files an application for the invention.

Another advantage of filing a provisional patent application is that the cost to prepare and file a provisional patent application is less than the cost to prepare and file a non-provisional patent application.  The cost of preparing and filing a provisional patent application is less because the USPTO filing fees and the formalities involved in preparing and filing a provisional patent application are less than those of a non-provisional patent application.

Another advantage of filing a provisional patent application is that “patent pending” status is granted once a provisional application is filed.  Many businesses and inventors use the “patent pending” status to raise capital to fund a project, increase market awareness, ward of competitors, and market and advertise their products or services.

Another advantage of filing a provisional patent application is that it allows an applicant to establish an early filing date on an invention even though the invention is in the process of further development.  An applicant may still be tweaking certain aspects of an invention, but desires to establish an early filing date on the concepts or inventions already known.  In such a case the provisional patent application provides a lower cost means of allowing an applicant to establish a filing date.

Another advantage of filing a provisional patent application is it allows an applicant to deal with any administrative issues.  One issue that many business have, especially universities and business with large dedicated research and development departments, is determining who the inventors are of a new invention.  Because of the relaxed formalities of a provisional patent application, the inventors of an invention are not required to sign an oath or declaration of inventorship in order to file a provisional patent application with the USPTO.  As a result, sometimes an applicant will file a provisional patent application in order to sort out any inventorship issues.

Another advantage of filing a provisional patent application is it may shift the patent term.  In the United States, generally speaking, the term of a utility patent is twenty years.  The term begins when the non-provisional patent application is filed (known as the “filing date”) and expires twenty years after the non-provisional filing date. However, the period in which a provisional patent application is pending does not count against the term of an issued patent.  As a result, filing a non-provisional patent application claiming benefit to a provisional patent application may extend the term of the patent by 1 year while still enjoying the benefit of the early filing date of the provisional patent application.

What are the disadvantages of a provisional patent application?

One disadvantage of filing a provisional patent application is that the overall costs may be more expensive than if only a non-provisional patent application had been filed.  While the initial cost to file a provisional patent application may be lower, the overall cost of acquiring an issued patent may be more expensive in the long run. This is because an applicant will eventually have to file a non-provisional patent application within one year of fling the provisional application in order to receive an issued patent.

Another disadvantage of filing a provisional patent application is that it will delay the issuing of a patent.  A provisional patent application is never examined by anyone at the USPTO and does not mature into an issued patent unless a non-provisional patent application is filed.  As a result, examination of the patent application will be delayed and ultimately will delay the issuing of a patent application.

Another disadvantage of filing a provisional patent application is that it accelerates the deadline for filing a foreign patent application.  A foreign patent application must be filed within one year of the earliest filing date.  If a provisional patent application is filed, then the applicant must be prepared to pay the costs of filing for a foreign patent within one year of filing the provisional application.

Finally, while the formalities involved in filing a provisional patent application are somewhat relaxed, an applicant must ensure that the application adequately discloses the invention.  A provisional application must enable a person of ordinary skill in the art to make and use the invention for the provisional application to provide a claim of priority to a related non-provisional application.  If the provisional application does not adequately disclose the invention eventually claimed in the related non-provisional application, then such non-provisional application may not be afforded the priority date of the provisional application.  Businesses should seek the advice of a patent attorney registered to practice by the USPTO, like the attorneys at Plus IP, when preparing a provisional application to ensure that the provisional meets the requirements mentioned above.

Depending on your business strategy, filing a provisional patent application may be the best option for your business.  Communicating your business goals to your patent attorney will assist in determining if filing a provisional patent application is the correct approach for achieving patent protection on an invention.  The registered patent attorneys at Plus IP are available to discuss your business goals to assist you in determining if filing a provisional patent application is the best option for your business.