Inventors: Do You Need A Provisional Patent Application?

Law Blog

The patent process can be confusing, but it's important to understand the ins and outs of patents if you have an invention that you'd like to develop, seek funding for, and market to the public. Provisional patent applications are a common point of confusion for entrepreneurs who aren't well-versed in patent law. Take a look at some things you need to know when deciding whether or not you need a provisional patent application.

Provisional Patent Applications: What They Are and What They Aren't

First, it's important to understand what a provisional patent application is. The provisional patent application is a somewhat abbreviated version of a patent application that is subject to less scrutiny than a non-provisional application. The United States Patent and Trademark Office (USPTO) reviews provisional patent applications to ensure that they meet minimum filing requirements, but does not conduct a prior art search or examine them. You need to provide only a cover sheet, a description of your invention (with pictures, if necessary) the names of the inventors, and the filing fee.

You also need to know what a provisional patent application is not. It is not a provisional patent – there's no such thing in the US. It is only an application. A provisional patent application has an expiration date, and if you don't take further action on your patent, it will expire. It will never become a patent on its own – you will still need to fill out the regular non-provisional patent application in order to be granted a patent. Provisional patent applications cannot be renewed or extended.  

The Benefits of a Provisional Patent Application

The United States is a first-to-file country. Put simply, this means that the first person to file the patent for a new invention is the one who gets the patent. A provisional patent application can help you ensure that you're the first to file. Your provisional patent application is good for one year. If you file for a non-provisional patent within that year, the provisional application establishes an earlier filing date. You can also use the legal term "patent pending" in your marketing while the provisional application is active.

This means that if you don't have the money for a regular patent filing fee, or if you're not sure whether your invention is commercially viable and want to do more research before investing in a patent, you can pay for the much less expensive provisional patent to hold your date while you do more research or raise funding. The ability to use "patent pending" in your marketing can also discourage other inventors from poaching your designs.

The Drawbacks of a Provisional Patent Application

Because a provisional patent application is less detailed and undergoes less scrutiny than a regular patent application, it can be easy to rush through it just to establish the patent date of your invention. However, failing to be accurate and thorough in your application can backfire on you. If your data is faulty, your drawings are too vague or inaccurate, or you leave information out, this can negate your patent protection rights, leaving the door open for another inventor to claim the patent on a more accurate design.

What's more, if you find that you need to change or modify your invention while the provisional patent application is active, you can't simply update the original application – you'll need to fill out a new one. While provisional patent applications are less expensive than non-provisional patents, having to fill out several of them can add up quickly. Filing a provisional patent application too early in the design process can cost you, so it's better to wait until you're certain of the final product's design.

While a provisional patent application can be a useful tool, they aren't appropriate for every situation. It's a good idea to consult a patent lawyer at firms like the Lingbeck Law Office to help you decide whether to proceed with a provisional patent application now, wait until later, or go straight for a non-provisional patent. 


1 December 2017

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