Provisional Patent Applications

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Many businesses and inventors use provisional patent applications as a first step in protecting their invention.  A provisional application is a legal document that establishes a filing date for an invention.  An early filing date is important under the patent laws because every country in the world now operates under a first-to-file system.  A first-to-file system means that the first inventor or applicant to file a patent application with the United State Patent and Trademark Office (“USPTO”) has the rights to an invention.

A provisional patent application is essentially a “place holder” in line at the USPTO.  However, a provisional patent application does not mature into a patent unless an applicant files a non-provisional patent application within one year of the provisional patent application filing date.  There is no such thing as a provisional patent.

A provisional patent application, if drafted correctly, does provide a business or an individual several advantages.  The provisional patent application must contain a written description and the manner and process of how to make and use the invention.  A provisional application must be drafted as to enable any person skilled in the art to make and use the invention.

One advantage of a provisional patent application is that a provisional patent application is typically less expensive than a non-provisional application.  A provisional patent application has has less formal filing requirements, may take less patent attorney time to draft, and has lower USPTO fees associated with it than a non-provisional application.  As result, by filing a provisional patent application a business my save money to spend elsewhere, such as on research and development, marketing and advertising.

Another advantage of a provisional patent application is that it allows a business to claim “patent pending” status. A patent pending status may provide a marketing and advertising benefit to an applicant.  Additionally, a patent pending status may ward off competitors from making, using or selling an invention. However, businesses should understand that, as mentioned above, a provisional patent application will never mature into an issued patent unless a non-provisional patent application is filed.

Another advantage of a provisional patent application is that a provisional patent application allows an applicant additional time to work out the “kinks” or “issues” of an invention.  Under United States law, after a non-provisional patent application is filed with the USPTO no new matter can be added to the non-provisional application.  In many cases, additional research may be needed on an invention; however, there is enough information available that would allow the applicant to adequately describe and explain the main component(s) of the invention.  In such a case, a provisional patent application would establish an early filing date for the main component(s) of the invention if the provisional was filed, while allowing the applicant to continue developing and improving the invention for up to one year at which time the applicant could file a non-provisional application disclosing all components of the invention.

Yet another advantage of a provisional patent application is less formal filing requirements.  When a non-provisional patent application is filed all inventors must submit and sign an oath or declaration of inventorship form.  However, when a provisional patent application is filed there is no such requirement. As a result, inventors unwilling or unavailable to sign the formal papers required to file the non-provisional application is not an issue.

Depending on your business strategy, filing a provisional patent application may be the best option for your business.  However, the provisional patent application does have certain limitations.  The attorneys at The Plus IP Firm are available to assist you in determining if a provisional patent application suits your businesses goals.