In an earlier article titled “Why Won’t My Patent Attorney File A Provisional Patent Application For Me?” we debunked the myth that you shouldn’t file a provisional patent application. Now we look at the top five (5) reasons why you should file a provisional patent application. But before we can answer that question, it is important to know what is a provisional patent application.
A provisional patent application is a patent application that describes your invention in words and optionally with drawings or pictures, and when filed with the United States Patent Office, receives a serial number and a filing date. On the same day that you file your provisional patent application with the United States Patent Office, you can mark your invention (brochures describing your invention, etc.) with the words “Patent Pending” (or “Pat. Pend.” for short). This is the same as filing a regular patent application. The difference is, a provisional patent application is never examined by the U.S. Patent Office and automatically goes abandoned after one year from the filing date.
You might be asking, “If a provisional patent application goes abandoned after only one year, why would I file one?” Here are the top five (5) reasons you should file a provisional patent application.
1. Can you afford to file a regular patent application? Your budget (or lack of a budget) is probably the number one reason to opt for filing a provisional patent application. In general, provisional patent applications cost significantly less than filing a regular patent application. There are no formal requirements for a provisional patent application, like there are for a regular patent application. So in general, it takes a patent attorney more time to prepare a regular patent application than it takes to prepare a basic provisional patent application. It’s the old adage that “Time Is Money.”
I’ve seen patent attorneys charge $6,000 to $8,000 or more just to prepare and file a regular patent application. Often the draftsman charges are in addition to the $6,000 to $8,000. Not to mention, the United States Patent Office charges nearly five (5) times as much for the filing fee to file a regular patent application. At the time of writing this article, the filing fee for a provisional patent application is a little over $100, while the filing fee for a regular patent application is a little under $500 (for individuals and small entities – double for large entities).
If you can’t afford to file a regular patent application just yet, but you don’t want to lose rights to your invention, consider filing a less expensive provisional patent application. Then when you have money from sales of your invention, or investors lined up, you can better afford to file a regular patent application.
2. Are you still developing your invention? There are many good reasons to file a patent application as quickly as possible, even before you have fully developed your invention. The most important reason for filing a patent application as soon as possible is to get a filing date with the United States Patent Office. Once you have a filing date, nothing developed after your filing date can be cited as prior art against your invention. In addition, you can publish your invention (for example, in a press release), publicly disclose and publicly use your invention, and offer your invention for sale and actually start selling your invention without losing the rights to your invention.
Even if you are still developing your invention, you can file a provisional patent application. Then if you come up with more developments during the one year before the provisional patent application expires, you can add those new features to the regular patent application. This way, nothing gets left out.
3. Are you ready to take your invention to the next level? Even if you think your invention is fully developed, it’s always good to get a second opinion (and a third opinion, and a fourth opinion . . . ). Showing your invention to friends and family, having a prototype built, and testing your invention may all lead to improvements, fixing things that don’t work, or coming up with different ways of implementing your invention.
But getting those second opinions means showing your invention to others, which can be risky business if you haven’t already filed at least a provisional patent application. In addition to reducing the risk that someone sees your invention and claims it as their own, a provisional patent application can also be important evidence that your invention belongs to you.
4. Are you ready to test the market for your invention? Maybe you think your invention is the greatest idea since the light bulb. You’ve told your spouse and a few close friends, and they all agree. But what really counts is how your invention is what the customers think. There are many patents issued every year, and many more patent applications filed, that never make it in the marketplace. Wouldn’t it be good to get some customer feedback to find out whether your invention is really all you think it is? Wouldn’t it be good to know whether your invention will be an instant success, whether it needs some more work, or whether it’s a total flop before you invest too much time, effort, and money in this idea?
Before you start test-marketing your invention, you’ll want to file a patent application to preserve your rights to the invention. But why spend a lot of money on a regular patent application when you have no idea how your invention will be received in the marketplace. Instead, consider filing an inexpensive provisional patent application. Then you will have nearly a year to test your invention in the marketplace, discuss it with others, and consider whether you really want to move forward with your invention. If it’s a great success, you can file a regular patent application by the end of the year. If it’s a flop, well then its back to the drawing board . . . but at least you didn’t spend a lot of money filing a regular patent application.
5. Is someone else interested in your invention? Maybe you have a close friend who works in the industry. You’ve told your friend about your invention in broad terms, and he or she is excited to learn more. Your friend wants to tell the management at their company about your invention. This might be the next big thing!
Before you tell your friend any more about your invention, you’ll want to file a patent application to preserve your rights to the invention and make sure there is no dispute over who owns the invention. Having a patent application on file with the United States Patent Office also shows others you’re serious about your invention. But why spend a lot of money on a regular patent application when you’re not sure if the company your friend wants to show your invention to, is really going to be as interested in your invention and your friend seems to think? Instead, consider filing an inexpensive provisional patent application. Then you can show your invention to others, and if there is interest, you can file a regular patent application by the end of the year.
So, should you file a provisional patent application? Ultimately, you will need to make the decision, weighing a number of factors, including budget, timeline for taking your invention to market, and various other business considerations and goals you have for your invention. And in some instances, it may make more sense to file a provisional patent application initially, instead of a regular patent application. Be sure to discuss the pros and cons with your patent attorney so that you can make an informed decision.
