Should You File a Provisional Patent Application?
Should You File a Provisional Patent Application?
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors a lower-cost first patent filing option called a provisional application. This was done to give inventors parity with foreign applicants under GATT Uruguay Round Agreements.
Inventors can file a provisional patent as an interim measure for their invention until they decide whether or not to convert it into a utility application. Doing so gives them time to assess the value of their innovation and compare it with the expense of obtaining a patent.
What is a provisional patent?
Provisional patents are patent applications submitted to the United States Patent and Trademark Office (uspto) for inventions. They are not permanent and must expire after 12 months from filing date, regardless of whether full protection is sought or not.
In order to be valid, a provisional patent must sufficiently describe your invention so that someone with ordinary skill in your field could recognize it from just reading its description. It should also include any drawings necessary for understanding the invention.
Your invention must be accurately described and the claims in your non-provisional application should reflect a complete explanation. Furthermore, this helps establish a filing date for your invention as well as serve as an interim placeholder until filing a utility patent application in the US.
Within 12 months of filing your provisional patent application, you must file a non-provisional patent application in order to maintain the priority granted by that application. This means that you need time to refine and perfect your invention during this period.
Provisional patents can be an invaluable resource for inventors with early ideas who lack the funds or time to fully develop their invention and file a non-provisional patent application. Furthermore, provisional patents can benefit those looking into patenting their inventions abroad since they allow them to reserve an earlier filing date than what would otherwise be granted if full applications were submitted.
Another advantage of filing a provisional patent is that it acts as the filing date for any subsequent overseas applications, granting you the benefit of your earlier filing date as the foreign priority date in these other patent applications and extending your patent term by up to one year.
If you decide to file for a provisional patent, it is highly recommended that you seek professional advice from a certified patent agent. A poorly written provisional application not only negates the purpose of setting an effective filing date but could potentially compromise your foreign patent rights as well.
Advantages of filing a provisional patent
Provisional patent applications can be an invaluable resource for inventors. The USPTO permits those in the early stages of developing an invention to file a provisional patent with ease.
Filing a provisional patent is advantageous as it establishes an early filing date for an invention in the United States, since we follow a first-to-file system where whoever files first gets exclusive ownership of their creation.
Another advantage of a provisional patent is its efficiency in saving an inventor time and money. Preparing a provisional patent application costs much less than non-provisional applications, saving inventors both effort and funds.
Furthermore, a provisional patent can be utilized to secure an early priority date for an invention. This is beneficial since it helps the applicant avoid being sued by a competitor for stealing their idea.
Filing for a provisional patent is an excellent way to assess the marketability of an invention before filing for full patent protection. This can be especially advantageous for businesses trying to launch products into the marketplace and needing to determine whether they are commercially viable prior to filing full patent applications.
One final advantage of filing for a provisional patent is the option to convert it to full patent after one year has elapsed. This can be an advantageous choice for inventors who have already developed their invention and are ready to take it further.
Inventors may use the term “patent pending” with their invention as a warning to competitors and as an opportunity to find a manufacturer or distributor before filing full patent applications.
Inventors may use the term “patent pending” in marketing materials and packaging during this one-year period to alert others that they have filed a provisional patent application. However, if an inventor opts not to pursue patent prosecution after this deadline has elapsed, their provisional patent will automatically be abandoned.
Drawbacks of filing a provisional patent
Although filing a provisional patent can have many advantages, there are also potential drawbacks that should be taken into account before making the decision whether or not to file one. These drawbacks could potentially hinder your overall strategy as an organization or inventor and should be carefully considered prior to deciding whether or not you want to proceed with filing for a provisional patent.
Delays in Issuing a Patent – Filing for a provisional patent has the primary disadvantage of delaying its issuance. This is because no one at the USPTO reviews these applications, so they do not mature into issued patents until another non-provisional application is filed. Furthermore, this type of patent does not enable inventors to claim priority back to their provisional application if they make improvements or modifications as described in their initial submission.
This is a critical consideration, since the earlier filing date of a provisional application only protects the invention as described in that application. Thus, if an inventor uncovers new details or processes not previously described in their provisional patent application, they will no longer benefit from the earlier filing date of their provisional patent.
Therefore, it is essential that a provisional patent application be carefully drafted and supported by its initial disclosure. Otherwise, a patent examiner may neglect to examine the provisional application, leading to insufficient coverage or invalidation based on prosecution history estoppel.
The primary disadvantage of filing for a provisional patent is its cost, which includes both filing fees and any additional fees that must be paid in order to complete and submit your patent application. As such, filing a provisional patent can be quite expensive in terms of both time and money spent on preparation after filing your initial provisional patent application.
In addition to filing fees, a provisional patent also requires an additional fee for filing drawings and diagrams with the application. At present, these fees are $1,050 for small entities and $525 for micro entities.
Costs of filing a provisional patent
If you want to safeguard your invention or intellectual property but are uncertain if it has commercial potential, filing for a provisional patent may be the best course of action. This type of patent provides you with a filing date for your idea so that competitors have an edge over you while also giving yourself freedom to work on it as needed.
However, filing for a provisional patent comes with some costs. You will have to pay the USPTO both a filing fee and an issuance fee if your application is granted. Moreover, having an attorney prepare the application and submit it to the USPTO will save time.
The cost of a provisional patent will depend on the complexity of your invention. We recommend speaking with a patent lawyer for an accurate estimate.
Provisional patent applications are an economical and efficient way to secure a filing date for your invention. They’re particularly beneficial to inventors who are uncertain about their invention’s market potential and need time to research and develop it before filing full utility patent applications.
Provisional patent applications are more cost-effective than non-provisional ones since they do not need formal examination by the USPTO. This can be especially advantageous for inventors with simpler inventions who want to assess whether their idea has commercial potential before investing in the lengthy process of obtaining a patent.
Another advantage of a provisional patent is that it can postpone the expenses associated with preparing and filing for regular patent applications for up to one year. This eliminates the need to pay the filing fee for non-provisional applications or pay an attorney’s services when filing them.
Furthermore, provisional patent applications can be filed without claims – an advantage for many inventors who want to skip the hassle and expense of creating claims in their non-provisional patent application. It’s essential to remember that if your provisional application does not contain support for your invention, then it will not become a patent.