Guide To Provisional Patent Applications
Introduction to Provisional Patent Applications
A provisional patent is a temporary patent that establishes your status as the inventor of your invention. Provisional patents are a public notice that you claim to be the inventor of your patent subject matter. A provisional patent does not give you the right to enforce the claims within the provisional application. Provisional patents are available for Utility Patents and Plant Patents, but not Design Patents or International Patents.
Purpose of Provisional Patents
I. Provisional patents give you an extra year of patent protection:
Patents protect your invention or discovery for 20 years from the time the patent application is filed. Patents can claim priority to earlier patent applications, including provisional applications. A provisional patent lasts for 1 year and does not count against your 20 years of patent protection. Therefore, if you file a provisional patent application followed by a non provisional patent application 1 year later, your patent protection will last 21 years.
II. Provisional patents protect your invention before it is completed:
Your invention does not always need to be fully completed to be eligible for a patent. However, patent claims must be specific and include details such as types of materials used, how components attach or work together etc. Inventors often change and improve their inventions during development. According to USPTO patent laws, a single change in an invention’s claims is new matter, and new matter requires a new patent application.
The problem? Your changes will not have the priority date of your original patent application. This can cause delays and expenses in obtaining a patent and lack of eligibility for the new matter. This can even cause a loss of rights to the entire patent if you already received an issued patent and try to go back and add new matter.
How to obtain a provisional patent
The first step to obtaining a provisional patent is filing a provisional patent application. The requirements of a provisional application are:
- A written specification of the invention, including a statement that the application is a provisional application;
- At least 1 claim;
- Drawings, if any are necessary to understand the invention;
- The filing fee;
- An oath or declaration;
- A translation if the application is not in English.
These are the requirements for a provisional patent application to issue. To obtain the filing date, and thus a priority date, all you need to file is the written specification and the claim or claims.
Where to file the provisional application
A provisional application for patent protection in the United States is filed at the United States Patent and Trademark Office (“USPTO”). The USPTO is located in Alexandria, Virginia and the physical mailing address can be found online on their website. However, the USPTO also uses electronic filing, which gives applicants faster processing times and reduced filing fees. It is always advisable to use the electronic filing system over physical mail. To obtain a filing date, you must submit the filing date requirements together. If not, you may receive a notice of missing parts in the mail, instructing you to file the remaining requirements. You will also receive a notice of missing parts if you submit only the filing requirements, but you will also receive your filing date.
Problems with provisional patents
Provisional patent applications are not examined based on the subject matter. Provisional patents are only examined to determine if the application is procedurally complete. This means you could be placing your bets on claims that are not patentable. If your subject matter is not patentable, you could lose the year in time, the priority date, the filing fees, and any attorney’s fees you paid for. For these reasons, it is incredibly important to conduct a thorough patentability search before filing a provisional application.
Conducting a provisional patent search
A provisional patent search is a search to view prior art published in provisional patent applications. This should be done as part of an overall patentability search. You cannot depend on a provisional patent search alone to determine patentability, as non provisional patents and non patented material is also considered prior art.
A patentability search should include a provisional patent search, a non provisional patent search, and a search for publications outside of patents. The goal is to determine if any published prior art exists relating to your patent subject matter. Once you compile a list of any published prior art, you should start by examining the closest prior art resembling your subject matter. You are looking to see if the prior art is exactly the same as your subject matter (anticipation), or if combinations of prior art render your subject matter obvious. This analysis is something patent attorneys do, and it is critical that you consult a patent attorney to help you through this process. You can always conduct an initial search to compile prior art and bring your findings to a patent attorney to reduce their time and save on some attorney’s fees.
How much does a Provisional Patent Cost?
To file a provisional patent, there is a fee for filing, potential attorney’s fees for preparing the application, and potential attorney’s fees for a patentability search. To file a provisional patent, the filing fee is currently $300 and can be found here. For an attorney to prepare your provisional filing, the fees vary but average around $3,500. A patentability search costs between $1,500 and $2,500 depending on the firm and the time spent. Overall, expect to spend around $4,000 for a solo / small firm and around $7,500 for a large firm to file your provisional patent application.
Is a provisional patent worth the cost?
Yes, a provisional patent is worth the cost. A provisional patent can give you an extra year of patent protection, it can give you extra time to complete your invention while retaining some priority rights, it is cheaper than a non provisional application, and a patentability search will carry over to the non provisional application. However, there are specific instances when filing a provisional application is not worth it. Specifically, if your invention is complete and your goal is to sell the invention, your invention is more valuable if you have a non provisional patent issued, or at least examined through patentability. In this case, you want to reach examination faster and would not need to file a provisional application.
How long does it take to get a provisional patent?
A provisional patent does not issue the way a non provisional patent issues. However, it is typically processed and effective in 3-6 months.
A provisional patent application is meant to either expire (become abandoned) or be converted into a non provisional application. The term abandonment at the USPTO means that examination of a specific application has ended. It does not mean your rights are lost. When you file a new application and claim priority from an older application, you retain the previous priority date and the original application becomes abandoned. Since a provisional patent is intended to claim priority in time, it will either itself become the non provisional application or it will provide a claim to priority in a new non provisional application and become abandoned. Since converting the application does cost you a year on the 20 year patent term, you almost always want to abandon and file a new non provisional application. Therefore, you never receive an official certified “provisional patent”, you merely reserve your priority claim and extent the time to file a non provisional application.
Do you need a patent attorney to file a provisional application?
Businesses and legal entities are required by patent law to be represented by a patent attorney or patent agent when filing applications or attending any USPTO proceeding. Individuals are not technically required to act through a patent attorney, but are highly likely to waste time and money without working with a patent practitioner. Patent laws and USPTO procedures are highly technical, and patentability searches require immense amounts of legal analysis. Furthermore, patent procedures are expensive and extremely time consuming. The base applications at their cheapest and fastest rates cost thousands of dollars and take over a year to process. Any missed step in the process can result in a loss of months due to how long the USPTO will take to respond to your mistake and then process any potential remedial filing. The remedial filings, if any are available, will cost filing fees that can add up to thousands of dollars quickly. Some mistakes even result in the loss of your ability to obtain a patent. This means your application fees and time spent result in you losing your commercial advantage. While a patent attorney cannot guarantee your success, you will be exponentially more likely to obtain a patent with the help of a registered patent attorney. For more information, or to work with a registered patent attorney at Collier Legal, contact me today.
I went to law school at Capital University in downtown Columbus. There, I became the first person in school history to graduate the program (a 3-year program) in just 2 years while on the Dean’s list. I started my firm straight out of law school after marrying my beautiful wife and passing the bar exam. Now, I represent businesses in litigation, draft transactional documents, provide legal advise to business owners, and represent them in transactional negotiations.