A provisional application is a cost-effective way of obtaining the earliest filing date for your invention as possible, which is vitally important considering that the United States has been under a first inventor to file system since 2013. Under this system, the first inventor to file a patent application, as determined by the application’s earliest filing date, will be able to obtain a patent if the application passes examination by the United States Patent and Trademark Office (“USPTO”). However, since the USPTO examines non-provisional applications and not provisional applications, provisional applications by themselves cannot mature into a patent. Accordingly, “provisional patents” do not exist. Furthermore, provisional applications are applicable only to utility inventions and not designs. Typically, one first files a provisional application and then, within one year, files a non-provisional application that claims priority to the provisional application (this one year period can be extended for two additional months provided that a hefty fee is paid and that the delay was unintentional).
Despite the lack of any “provisional patent,” a provisional application still has several advantages that may make it worthwhile to consider as an initial filing. First, provisional applications provide one year for the inventor to decide whether to file a full-fledged non-provisional application for the invention. Second, this one year period is not included in the 20-year term of the patent if the inventor files a non-provisional application that claims priority to the provisional application within the one year period. In this case, the 20-year patent term will start from the filing date of the non-provisional application. Third, USPTO fees for provisional applications are significantly lower than non-provisional applications, so the provisional application may save costs with respect to governmental fees. Fourth, the formal requirements for provisional applications are much more relaxed compared to non-provisional applications. For example, a provisional application only requires specification and a cover page, so no claims, drawings, or even an inventor’s oath or declaration are required. However, to enjoy the benefit of the provisional application’s filing date, the provisional application must describe the invention in sufficient detail to allow a person practicing in the field of the invention to make and use the invention. Therefore, it would be prudent to include detailed photos or drawings of the invention at least with the specification when filing the provisional application. Fifth, filing a provisional application will permit one to use the term “patent pending” on the invention described in the provisional application. While this list of advantages is not exhaustive, this list serves to illustrate why a provisional application may be an attractive option for inventors.
Should an inventor file a provisional application first and then file a non-provisional application later, or should the inventor file a non-provisional application instead? It depends. If the invention requires further refinement, or that its development is continuing, which may lead to additional features in the near future, then filing a provisional application may be suitable option. If development of the invention is completed, then the inventor may opt to file a non-provisional application instead. Still, there is no hard and fast rule for which option is the most viable, which is why consultation with a patent professional is highly recommended to determine which option is best suited given the facts for the particular invention. However, with respect to the contents of the provisional application, it is critical that the specification is carefully drafted to cover the invention and any variations thereof in sufficient detail to allow one operating in the field of the invention to make and use it as disclosed in the provisional application. Failure to do so may jeopardize the early filing date afforded by the provisional application. Furthermore, if the inventor is considering an international filing under the Paris Convention or the Patent Cooperation Treaty (“PCT”), then the inventor is likely required to file the required documents under either of these two international treaties within the one year period. Thus, a sloppily prepared provisional application may also jeopardize the early filing date when filing internationally.
While the provisional application has less formal requirements and is less costly to file than a non-provisional application, the provisional application still has to be drafted with great care to ensure that early filing date of the provisional application is retained for future patent application filings. Accordingly, an inventor should work closely with a patent professional to ensure that the provisional application is drafted carefully and of high quality to get the most out value out of the early filing date.
Disclaimer: This post is for general information only, and thus does not serve or represent any legal advice. No attorney-client relationship is formed.