This question gets asked of patent attorneys quite often. The answer, of course, depends on the particular circumstances surrounding an invention, but there are some general guidelines that can be followed.
A provisional patent application is a patent application that may be filed at the PTO that can be used to establish a filing date or date of invention. The application expires 12 months from its filing date. This means that, in order to claim the benefit of the provisional application filing date, a non-provisional application must be filed within that 12 month period. There is no such thing as a “Provisional Patent”, although you may hear that term. A provisional patent application does not give the inventor any rights to exclude, as an issued patent does.
The PTO does not examine provisional applications, but merely keeps them in its records. Filing a provisional application does not get the invention examined any more quickly; in fact, the application does not go into the examination queue at all, so it actually takes longer from the initial filing date of the application than if a non-provisional application were filed initially.
The public does not get access to a provisional application unless and until a non-provisional application that claims the benefit of the provisional application filing date is published. Thus, a provisional application delays publication of the invention, even if the applicant will be filing outside the US.
So, why would anybody want to file a provisional application?
The main reason is actually the delay. The provisional application gives an additional 12 months to further develop the invention and to see if there is a market for the invention, and it can also delay prosecution costs associated with the application.
First, it often takes a long time to perfect a new product or process. There are many details to work out and many improvements can be made in the early stages after the initial concept is completed. To establish an early date of invention, a provisional application can be filed once the initial concept is completed, but prior to the perfection of the invention. The 12 months before the non-provisional application must be filed can be an aid in this endeavor. Additional provisional applications can be filed during the 12 month period to establish an invention date for any improvements. Various strategies exist for which applications should be used for a priority claim.
Second, a provisional application delays some of the expenses associated with obtaining a patent. For example, the filing fee for a provisional application is currently only $220 ($110 for small entity), while the filing fee for a non-provisional application is $1090 ($467 for small entity filed electronically). There are additional fees for excess claims, prosecution fees, and issue and publication fees. It may be advantageous to delay these fees until it is determined that there is a market for the invention. A provisional application gives the application 12 months to find investors, buyers, or licensees for the product or process.
It’s a lot cheaper to prepare a provisional application, right?
Many people believe that filing a provisional application is a simple thing. Some inventors will do it themselves, before going to a patent attorney for a non-provisional application a year later. Others want their attorney to prepare a bargain application of maybe a few pages or so. After all, provisional applications don’t even require claims.
Sometimes, it is necessary to file a quick and dirty provisional application, such as where there is going to be an imminent product release or publication that could create a bar to getting a patent in the future. For the most part, however, it is not cheaper to prepare a provisional application than a non-provisional application.
In order for a later-filed non-provisional application to obtain the benefit of the filing date of a earlier provisional application, US patent law requires that the claims of the non-provisional application be supported by the provisional application. What this means is that an applicant must include sufficient detail in the provisional application in order for it to do any good. Otherwise, you are only entitled to the filing date of the non-provisional application. In that case, the provisional was a waste of time and money and the delay in filing the non-provisional application may be detrimental to obtaining a patent for the invention.
Applicants should take the time and spend the money to have a good provisional application prepared that includes as much detail as is available at the time of filing the provisional application.
In summary, a few points are worth mentioning or repeating:
- A provisional application can be a good idea to establish an early filing date and to give additional time to perfect the invention or work on improvements, as well as to determine whether there is a market for the product or process.
- A provisional application can also be a good way to delay filing and prosecution costs until a later date.
- A provisional application should not be filed until the invention includes sufficient details to reduce the invention to practice.
- Provisional patent applications should include sufficient detail to support claims in a later-filed non-provisional application.
- A provisional patent application permits the applicant to mark a product as “patent pending.”