You might ask whether you should file a provisional patent application or not. There is no real yes or no answer to this question as every situation is unique. You, as the inventor, should decide what is best for your situation but here are some guidelines to help you determine your answer.
You should keep in mind that it is not a “provisional patent” you are filing. A provisional patent application is a placeholder that establishes a filing date for the invention but will not result in a patent. The filing date is important in the patent application process because it establishes a starting point for the protection of your invention. Once your provisional patent application is filed, you have up to a year to decide whether to proceed with obtaining a patent and filing the non-provisional patent.
This one-year period does allow you to take on many tasks that are important to the commercial process. These include researching the market potential, finding investors, doing a prior art search and searching sources to see if your invention is already in existence or if someone else has previously disclosed it and evaluating if you should hire a patent attorney or agent, which is strongly recommended.
One of the major advantages of filing a provisional application is that you are allowed to use the term “patent pending” in conjunction with your invention (including the marketing and packaging of the invention) during this one-year period to let the public know that an application has been filed with the United States Patent Office and to warn potential infringers.
If, during this one-year period, you decide you do not wish to proceed with the patent any further, there is nothing you need to do. The provisional patent application will automatically go abandoned you can no longer use the term “patent pending.”
If you do wish to seek the patent, then you must file a nonprovisional patent application within one year of the filing date of the provisional patent application. The nonprovisional patent application must claim the benefit of the provisional patent application.
Another big advantage is if the nonprovisional patent application does result in an issued patent, the patent term, which is the amount of time the patent is in force, is measured from the filing date of the nonprovisional patent application. This means it may be extended by up to 12 months.
A few things you should keep in mind if you decide to file a provisional application are: (1) provisional patent applications are not examined, meaning you will have no indication as to the patentability of your invention; (2) designs cannot be filed as a provisional patent application; and (3) claims are not required in provisional application but it is recommended that the disclosure of the invention be as complete as possible.
Are you considering patenting your invention in a foreign country? If so, the provisional patent application would be a good option. The provisional patent applications can provide a foreign priority benefit for those seeking patent protection internationally.
Provisional patent applications are not released to the public unless the application number is referenced in an application or patent that is published later, such as through a priority claim.
If you are considering filing a provisional patent application it is important to get help from a patent attorney or agent so that they can help you through the entire process.