What is a provisional patent application, and what does it do for me?

The term “provisional patent application” is a bit misleading in that it is not really an application at all. Rather, a provisional patent application might be more accurately labeled as a provisional invention disclosure document. What I mean by this is that the provisional patent application is not an application in the sense that you are applying for something from the U.S. Patent and Trademark Office (USPTO). That is, an application to a government entity generally is a request for that entity to review the application and issue some response or decision based upon the application.

However, provisional patent applications receive only a very cursory review from the USPTO to make sure the minimal filing requirements are met. It is basically just putting a document on file, and no real action is taken based upon that document. Unlike the formal utility patent application (also referred to as a “non-provisional” application by the USPTO), the provisional application is never assigned to a patent examiner for official review. Rather, it serves as a priority document providing the inventor(s) who filed it with a priority date for the information that is disclosed in this document.

Provisional Patent Compared to Utility Application

Moreover, as noted above, the formal requirements for a provisional patent application are relatively few, in contrast to the utility application which is one of the most complex, formalistic, and technical documents there is in the legal business. For example, a provisional application does not have to have any claims, whereas a utility application must include at least one claim defining the scope of the invention which the inventor(s) seeks patent protection on. Furthermore, provisional patent applications are not required to have drawings, and even if there are drawings included in a provisional patent application there is no requirement that each element in the drawings be identified by reference numeral with a corresponding written description for each enumerated element. Yet, all of these requirements (and others) apply to the formal utility application.

Why Get a Provisional Patent?

So what, then, is the point of a provisional patent application? Basically, it is a tool to allow inventors to relatively quickly and inexpensively obtain a priority date for their inventions. Quick, in that it does not have to meet all of the above-noted formalities of a utility patent application, and therefore does not take as much time to prepare. Inexpensive, in that the small entity filing fee for a provisional application is currently $140, whereas the utility application filing/search/examination fees total about $900 for the same small entity. Plus, it takes more time (and therefore expense) for a patent attorney to prepare the formal utility patent application than it does a provisional patent application.

Best Uses for Provisional Patent

Accordingly, the best uses for a provisional patent application are when (a) time is of the essence, and/or (b) when you want to defer some of the costs associated with the utility application until later down the road. When would time be of the essence? Well, a full explanation of that would require a whole separate blog(s), but generally speaking a patent application should be filed before there is any public disclosure, sale, or offer for sale of an invention. Thus, if one of these is imminent, a provisional patent application is appropriate to get a filing date before such event occurs.

It is also very helpful to file a provisional application before you start working with vendors to help develop the invention, even if they have signed a non-disclosure agreement for you. This is because the provisional application provides an easily verifiable government record of what your invention was prior to contacting the vendor, which can be important if the vendor comes up with changes/improvements.

Are They Cheaper?

As for deferring costs, note that the operative word is “defer”, not reduce. Filing a provisional patent application does not make the overall patent preparation and filing process less expensive. Rather, it adds to the overall cost vs. filing a utility application from the get-go. Yet, filing a provisional patent application allows you to state that you have a “patent pending” for the invention disclosed in the application, and for some inventors gives them a runway to help secure funding before the bulk of the utility application preparation costs are incurred.

Please note that the foregoing is provided as general information about provisional and utility patent applications for educational purposes only, and is not intended to provide any specific legal advice. You should consult with a registered patent attorney about the specific circumstances of your case, as different courses of action may be different in different scenarios.

Article by John Woodson

John Woodson is a Registered Patent Attorney who practices in the area of patent prosecution, patent infringement studies and client counseling. His patent prosecution experience includes electrical and electronic equipment, telecommunications equipment, laser and optical devices, semiconductor devices, semiconductor processing, hydrocarbon recovery and well logging, mechanical devices, medical devices, and software and Internet related inventions. Mr. Woodson also has extensive experience prosecuting foreign-originated patent applications, and instructing foreign associates on prosecution of U.S. originated patent applications.