Provisional Patent Application

A provisional patent applications is a document filed with the USPTO that discloses the details of your invention.  Although a provisional patent application establishes an earlier filing date, a provisional can NOT mature into a patent unless the provisional patent is converted into a regular non-provisional patent application within one year.

The requirements of a provisional application include the specification (a description of your invention) and a drawing(s) of the invention (required when it is necessary to  understand the subject matter of the invention).  The provisional does not require patent claims, nor other formalities such as the inventors’ oath or an information disclosure statement (IDS).

The greatest advantage of a provisional is the significantly lower filing fee ($260) when compared to the filing fees for a non-provisional ($1600).  This is due in part because the provisional is never examined by the USPTO, whereas a non-provisional is subject to examination for patentability.

The following are some advantages and reason for filing a provisional patent application in lieu of a non-provisional.

    • A provisional allows you some time (1 year) to test the marketability of your invention before investing in a non-provisional.
    • A provisional delays the cost for filing a US patent application, as well as the US patent granting process (prosecution of a patent with the USPTO).
    • A provisional allows to claim “patent pending” which is often significant when shopping your invention or looking for investor capital.
    • A provisional limits the amount of prior art that can be used against the patent application during prosecution (only prior art that pre-dates the filing date can be introduced against your patent)
    • Inventorship may be corrected in a provisional.

It is important to note, that if an applicant is interested in foreign patent rights, a provisional can be dangerous unless great care is taken with the applicant’s post-provisional actions.  This is so because inventors are often misled into thinking that once they have filed a provisional application, they are “patent pending” and they can begin selling their invention. Indeed, provisionals are frequently filed in the days before a public disclosure: a researcher may be presenting the provisional’s subject matter at a conference or a company might be doing a product launch of the invention.  However, later-filed applications, if they contain material that was not included within the provisional, will not receive the benefit of the provisional’s filing date.  In the US, that generally means the new subject matter receives a different filing date.  In most foreign countries, however, where absolute novelty is a requirement, a disclosure of the invention after the provisional but before a patent application can extinguish the patent rights in that invention.

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