When and Why Is a Provisional Patent Application Useful?

DEREK FAHEY, ESQ.

A provisional application may be a useful tool for many businesses. Under United States patent law, a provisional application is a document filed with the United States Patent and Trademark Office that allows an inventor to establish an early filing date. A provisional application does not mature into an issued patent unless a regular non-provisional patent application is filed within one year. There is no such thing as a “provisional patent.”

Advantages of a Provisional Application

Lower Initial Cost

A provisional application is generally less costly to prepare and file than a non-provisional application because it involves fewer formal requirements and lower government filing fees. Some individuals and businesses use the initial savings to promote or advertise a product while preserving an early filing date.

Patent-Pending Status

Once a provisional application is filed, a product may be marked “patent pending.” That status may discourage competitors from copying the idea and may also be useful when seeking financing or marketing the product.

Potential Patent-Term Shift

A provisional filing can preserve an early priority date for up to one year before the non-provisional application is filed. Because the provisional period generally is not counted against the twenty-year patent term measured from the effective non-provisional filing date, this approach can shift the practical end of the patent term into the future.

Reduced Formalities

A provisional application can also provide time to resolve ownership questions, inventor-signature issues, or uncertainty about who should be named as an inventor before a non-provisional application is filed.

Important Limitations and Risks

The Disclosure Must Be Adequate

A provisional application only provides priority for subject matter that it adequately discloses. The filing must enable a person of ordinary skill in the relevant field to make and use the invention. Because provisional applications are not examined, an inadequate disclosure may not become apparent until years later during prosecution or litigation.

Patent Issuance Will Be Delayed

Filing a provisional application before a non-provisional application generally delays the examination and issuance timeline. Businesses should consider whether obtaining an issued patent sooner is more important than preserving the additional year.

Total Cost May Increase

The overall cost of obtaining a patent may be higher because the provisional application is followed by a separate non-provisional application.

Foreign Filing Costs Arrive Earlier

Foreign patent applications generally must be filed within twelve months of the provisional filing date. Applicants should therefore be prepared to incur foreign-filing costs within that period.

Communicating the company’s commercial goals, timing, budget, and foreign-filing plans to patent counsel is critical when deciding whether a provisional application is the right strategy.