What Are the Benefits vs Drawbacks of Filing A Provisional Patent?

1. What are the benefits of a provisional patent?

  • Provides basic protection for the idea disclosed in the PPA for one year while you evaluate the business and/or technical merits of your idea.
  • Costs less than full utility patent application. A PPA costs hundreds of dollars, rather than the thousands or tens of thousands of dollars to have patent lawyers prepare a full utility patent application.
  • Establishes an official USPTO record of your date of the invention, so you can reap the benefits of an early filing date.
  • Begins the clock for the Paris Convention priority year.  That means that you have to file international applications within one year.
  • Allows you to use a “Patent Pending” notice to deter others from copying your idea.
  • Is easy to prepare. There is no formal requirement concerning format/style and formal papers, such as the Inventor’s Oath or Declaration and the Information Disclosure Statement to disclose all relevant information known to the inventors. Thus, virtually any one can draft a PPA.
  • Adds one year of life to a U.S. utility patent application. Because the utility application’s life begins when the PPA is converted into a utility patent application.  So, the invention can be protected using the patent system for as long as 21 years from the PPA filing date.

 

2. What are the drawbacks of a provisional patent?

  • Only preserves your rights for a year and does not result in a utility patent by itself. To get longer protection, you must convert the PPA to a utility patent application within one year of filing the PPA.  If your invention is “in use” or “on sale” in the United States and you file a PPA but fail to timely convert the PPA into a utility application within the twelve month period, you may lose the right to ever patent the invention.  That’s because the use or sale of the invention can be prior art against your own subsequent patent application.
  • Delays examination of the patentability of your invention. A PPA is not examined until you convert it to a full utility patent application. 
  • Triggers the one year international filing deadline.  So, one year from filing a PPA, you need to file a [k:  I don’t know what a pct is] (PCT) or directly file in the countries that you’d like protection in, if you want to claim the PPA’s filing date for the corresponding international applications.
  • It’s only effective in the United States. 
  • Is worthless if the invention changes so much so that it is not what is described in the PPA.