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.
Why then, you might ask, should I file a provisional patent application, if it is simply going to go abandoned after one year? There are a number of reasons you may want to file a provisional patent application instead of a regular patent application. Your patent attorney should discuss these with you so that you are comfortable making an informed decision for proceeding to protect your invention.
Put simply, applying for a provisional patent application is a low cost method of filing for a patent which allows independent inventors the opportunity to protect their product ideas for 12 months with “patent pending” status. This allows the individual time to help market their idea, generate capital, and keep others (sometime larger companies) from infringing upon their idea before applying for a traditional utility (non-provisional) patent. One reason it is more simple and cost effective is because you can file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It can basically be written explanations and drawings that convey the purpose or use of your idea.
This can be a concise document consisting of several pages, using simple terms to explain your idea. Another benefit of the provisional patent application process is that it helped level the playing field for American inventors. US patent laws are now more in line with patent laws in other countries with the introduction of the Provisional Patent Application (PPA).
Just to give you a brief history on the creation of the Provisional Patent Application. On June 8, 1995 the United States Patent and Trademark Office (USPTO) started offering this method of applying for a patent, which allowed US inventors a less expensive first patent filing. It was also designed to give US patent applicants equality with foreign applicants under the GATT Uruguay Round Agreements. By doing so it provided a way to institute an early effective filing date, which you could then later file a non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description and marketing of the invention.
As previously mentioned, the provisional patent application is good for a period of 12 months from the date that it is filed, and cannot be extended under any circumstances. Consequently, sometime during this 12 month period the applicant must file for a non-provisional patent application in relation to the provisional patent application, in order to benefit from the earlier file date. This non-provisional patent application filing must contain or be amended with specific references to the previously filed provisional application. In other words, have some similar qualities to your originally provisionally patented idea.
Provisional patent applications differ from the more common non-provisional patent applications in several ways: First and foremost a provisional patent application filing is a great deal less expensive than applying for a utility patent. The filing fee for a provisional patent application is much less. Also compare the cost of a provisional application to the thousands of dollars you can spend with all that is involved to with a full patent application (research fees, issue fees, attorney fees, maintenance fees, etc…), the $125 seems like a drop in the bucket. Provisional patent applications are also much easier than non-provisional application. You can forgo many of the complicated processes involved with a non-traditional application. For example; Patent Application Declaration (states you are the actual inventor and have disclosed all information you feel is relevant to the examination of the application), Amendments to the application if not initially approved by USPTO (which is very common), or Information Disclosure Statement (a discovery of all the relevant information known to you that is related to the originality of your invention). Probably the most important difference is that a provisional patent application will not result in you having a patent at the end of the 12 month period, or any of the rights you would be granted with a full patent. The provisional application provides you with some time to decide if you want to go through the process of obtaining a non-provisional patent application, and the privileges that come with that patent. This decision must be made within a year from your provisional patent application date, and ultimately approved by the USPTO to receive the rights and privileges that come with a patent.
Although the provisional patent application process sounds simple, there are several “cautions” you can find listed on the United States Patent and Trademark Office website that you would need to pay attention to before filing. Here are some of the issues listed as per the USPTO site:
- Provisional applications for patent may not be filed for design inventions.
- Provisional applications are not examined on their merits.
- Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
- It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
- In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
- If there are multiple inventors, each inventor must be named in the application.
- All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
- The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
- A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
- There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
- Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
- No information disclosure statement may be filed in a provisional application.
A provisional patent application is a patent application. It just doesn’t have all the formal requirements of a regular utility application. That is, the provisional application does not require claims. It doesn’t require an abstract. It doesn’t even require drawings. But of course, you should have drawings.
See the content requirements for a provisional and nonprovisional patent application.
When I write a provisional patent application, it is going to have claims, and it is going to have drawings. But the drawings aren’t the formal patent drawings. You don’t need to have drawings with all the reference numbers like you see in issued patents. The drawings can be sketches. In fact, a lot of the time I include photographs, especially if the inventor has a prototype or actual product of the invention. As the saying goes, a picture (or photograph) speaks a thousand words.
A provisional patent application is good in a lot of different situations.
For example, if you don’t have a big budget, a provisional application can be prepared inexpensively, especially compared to a full utility patent application. And that’s because a provisional application does not have all the formal requirements (e.g., the formal drawings and reference numbers).
A provisional patent application can also be prepared faster than a full utility patent application. For example, you don’t have to get the patent draftsman involved to prepare formal drawings or meet other formal requirements. And you don’t have to include claims (although I typically do).
Can you file your own provisional patent application?
You can, but should not. Work with an experienced patent attorney. A patent attorney can help draft a much better, stronger provisional application. Because if you forget something – leave out an important feature – it’s not protected. The provisional application only covers that which is included in the specification and drawings. If you write too narrowly, or don’t sufficiently broaden the description of the invention, you can lose important legal rights to the invention. A patent attorney can help with all of this.
Be sure to ask your patent attorney if a provisional patent application is right for you
