What is a provisional patent application and when should I file one?

What is a provisional patent application and when should I file one?

A granted patent provides a time-limited right to exclude others from making and using an invention in exchange for public disclosure of how the invention works. In this article, you’ll learn how provisional patent applications differ from utility applications and why provisional patents are useful.


What is a provisional patent application?

A provisional patent application is a type of patent application, and additional steps are required before a patent can be granted for the invention it describes. However, a provisional application provides a lot of bang for the buck. Every inventor, from the cash-strapped garage inventor to the multinational company, can use provisional patent applications as part of their innovation strategy.

In the race from idea to invention to product, other inventors are likely present. For years, the U.S. was a first-to-invent system, meaning if two applicants filed for patents at the same time, the one able to prove earliest inventorship would win. However, the U.S. is now a first-to-file system, meaning the first inventor to file a patent application will prevail, so filing as soon as you have an invention is vital. Because filing requirements are minimal, a provisional application can be filed quickly, earning you a filing date and the ability to describe your invention as “patent pending.”

No later than one year from the filing date, the provisional application must convert to a utility application to keep it moving toward a granted patent. Unlike a provisional application, the USPTO has strict standards for formatting, drawings, and claim language of utility applications. A provisional application remains non-public during its life, and is not examined by the USPTO to determine if the invention is patentable. Only after filing a utility application is your application examined by the USPTO for patentability.

In a provisional patent application describe exactly how to make and use the invention. Don’t assume that the reader will fill in the gaps; describe everything in detail.

If your invention is a machine, device, or other physical thing, then describe all the parts in detail. What does each part look like? What is the purpose of each part? What materials can each part be made of? How does each part connect to other parts? What’s the best way to build the invention? What other ways can it be made? Include drawings that show all the parts and how they connect. Also describe how someone would use your invention step by step, tying each step to the parts involved in making that step happen.

If your invention is a method, describe the of equipment that is needed to implement the method. Include a drawing of that equipment. Describe the method step by step, indicating what equipment is involved in making each step happen. Include flowcharts showing the steps.

Include in your application all your ideas of how to solve the problem the invention is addressing. Including many ideas creates options for later use. When converting the provisional to a utility you’ll be able to draw any idea that was in the provisional application into the utility application and keep the earliest date. New material can be added when the utility application is filed, but if not supported by the provisional application, a later date may be assigned to the new ideas. When converting the provisional to a utility application, that is your last chance to add new material. If you want to add something new to a utility application later, you will have to file a separate application and pay the utility filing fees again.

Hand-drawn figures and photographs are fine in a provisional application. Professionally drafted drawings look fantastic but are not mandatory. Just make sure each drawing is neatly done (no copier marks or visible erasures) and that a low-quality copier could clearly reproduce the drawing.

You may have heard stories of ideas sketched on napkins and filed as provisional applications or “coversheet provisionals” in which academic papers are filed with a provisional coversheet. While the USPTO will accept such applications, this is a last resort. The best practice is to file the most complete application allowed by time and finances.

The table below provides a brief overview of patent document types

 

 

Provisional application

Utility application

Granted utility patent

Publication date

Does not publish

Typically publishes 18 months after filing

Publishes at issue date

Life expectancy

One year from filing date

Remains pending until granted or abandoned

Generally, 20 years from application filing date (ask a patent attorney for details)

Additional requirements

Not reviewed for patentability

Can’t be used for design patents

Strict formatting, drawing, and claim language requirements

Rigorously reviewed for patentability

Must pay three sets of maintenance fees to keep the patent alive


How much does a provisional application cost?

As of April 2020, the provisional filing fee is $70-$280 and a utility application typically costs $430-$1,720, depending on the size of the entity that is filing. These are the fees the USPTO charges for filing, excluding patent attorney or agent drafting fees. While these numbers make a provisional application look more attractive compared to a utility application, keep in mind that a provisional application defers the costs of a utility application. The provisional application must be converted to a utility application no later than one year after the provisional filing date to keep the application progressing toward a granted patent.

The definitions of micro, small, and large entity are too involved to include here. Contact me for more information.

 

 

Provisional

Utility

Micro entity

$70

$430

Small entity

$140

$860

Large entity

$280

$1,720

 

 

 

 

 

 

 


When should I consider a provisional application?

Imminent public disclosure: It’s best to have a patent application on file before talking to a third party about or offering the invention for sale. If you have a meeting scheduled and don’t have time to get an application together or otherwise aren’t ready to do a utility application, then a provisional is a good choice.

Past public disclosure or offer for sale: If you have already offered your invention for sale or had another public disclosure, contact a patent attorney or agent right away! That disclosure created a filing deadline, and if you wait too long you will miss the chance to apply for a patent. A provisional application can be used to get an application on file quickly when there is an imminent deadline.

Deferring costs: A provisional application gets you a filing date, but there is still effort and expense in store before you get a patent certificate. A provisional application won’t save money in the long run since the utility filing fees will ultimately need to be paid, but it does defer costs while you are marketing the invention or seeking funding to develop it further.

Ongoing development: It is permissible to add content to the application when the provisional application is converted to a utility application. Once a utility application is filed, no new matter can be added without filing a new application. If the invention is close but small adjustments are still being made, a provisional is a good choice.

You’re not in a hurry: Provisional applications are not examined, and they remain non-public during their pendency. If you want to get a patent as quickly as possible or publish the application quickly, then filing as a utility application may be a better option.

Matter of course: Some applicants initially file their applications as provisionals as a matter of course. If no additional development has occurred since the provisional application was filed and the application meets all the requirements for a utility filing, then the provisional application can be filed as a utility application with no changes. However, in my experience there are always updates. Inventors never stop inventing, and improve the invention during the year. If there are significant improvements, you can file additional provisional applications during the year and combine them when the utility application is filed.


Conclusion

While an optional step towards a granted patent, a provisional patent application can secure you an earlier filing date while leaving options for refining the invention and delaying the expense of a utility application. This is a powerful tool provided by the USPTO!

Contact me for help developing the right intellectual property strategy. I have been registered to practice before the USPTO since 2007. Before then, I was a systems and hardware engineer at a large precision agriculture company. I’ve walked the walk, combining experiences of designing products, drafting and prosecuting many patent applications, negotiating many contracts, and operating my own business.

To discuss intellectual property strategies for your inventions, contact me at 515-727-1633 or melinda@vanderveldenlawfirm.com.

To receive future articles like this one, send an email to info@vanderveldenlawfirm.com.

 

Disclosure and limitation: This guide is for informational purposes only. The contents of this guide are not legal advice, and no attorney client relationship has been formed.