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What Is a Provisional Patent Application?
Note that while provisional patent applications are exclusively available in the U.S., priority from these applications can be claimed in association with a regular patent application filed in any number of patent offices across the globe. Thus, for example, an applicant may benefit from the filing date of a U.S. provisional application when filing their regular, non-provisional Canadian application. To the extent that the subject matter in the latter was disclosed in the former, and country-specific requirements for priority claims are met, the application will have a filing date corresponding to the U.S. provisional. More on the significance of filing dates below.
A provisional patent application is most often utilized when a proposed invention is still under development. If you file a regular, non-provisional patent application, you cannot add any new subject matter to that application and you are restricted to the description of the proposed invention as it was at the time of filing. Refinements to a proposed invention, however, can be added during the formalization stage of a provisional patent application prior to its filing as a regular, non-provisional patent application.
Note, however, that any new matter incorporated in the regular, non-provisional patent application, which was not disclosed in the provisional application, will not benefit from the provisional application’s filing date. In such cases, different aspects of your invention may be subject to different filing dates. What this means for the applicant is that the patentability requirements of novelty, non-obviousness and utility will be assessed relative to two or more points in time. To ensure the earliest filing dates possible, some applicants file more than one provisional on the road to a non-provisional application. The regular non-provisional may then claim priority from all of these (provided it is filed no later than 12 months after the first provisional application).
In summary, filing a provisional patent application, as compared to filing a regular, non-provisional patent application, is advantageous because it does not impede your ability to add new matter, such as refinements to your proposed invention, which are inevitable during the development phase of a new and inventive device, machine, process, method or system.
An inventor may also decide to file a provisional patent application in order to defer a portion of the costs associated with drafting and filing a regular, non-provisional patent application to a later date. A provisional patent application is often referred to as an “incomplete” patent application, because there are fewer formal requirements to abide by, as compared with a regular, non-provisional patent application. Fewer formal requirements results in less time and money spent preparing the required materials. Accordingly, provisional patent applications are typically an approximation of a regular, non-provisional patent application.
In some cases, a provisional patent application will substantially resemble a non-provisional, and in those cases less work will typically be required to formalize the application down the road. In other cases, a provisional patent application may include nothing more than, for example, an existing scientific publication describing the invention. This application would involve much more work to formalize when the time comes. Although provisional patent applications are subject to fewer formal requirements, getting them right remains very important. Under-disclosing your invention in your provisional application can prevent you from later claiming the benefit of that earlier filing date. Thus, drafting a provisional patent application requires careful thought and consideration. Applicants are encouraged to consider consulting an experienced patent lawyer who can help you navigate through the various legal requirements.
With this, there are typically costs savings since there are fewer requirements to fulfill, and it is less onerous to prepare , which, in turn,typically reduces the cost associated with preparing and filing a provisional patent application. Further, if and when an investor decides to convert a provisional patent application into a regular, non-provisional application, a portion of the work will have already been done. The result is typically that the non-provisional patent costs are divided between the provisional and non-provisional patent application stages and the second stage (i.e., preparing the corresponding regular, non-provisional patent application) costs are payable up to a year after the provisional patent application stage. With a regular, non-provisional patent application, the full cost of the application is typically due up front, all at once. The cost of any application will depend largely on the complexity of the subject matter. If, for example, the invention is technically advanced, then the application may require a more detailed specification as compared to an application for an invention that is less complex.
Further, the fact that a provisional patent application is never examined and is held confidentially by the U.S. Patent Office, can be an additional source of cost savings. Significant investment is typically required during the examination phase of a regular, non-provisional application in order to respond to objections leveled by the examining patent office, such as the USPTO. Accordingly, filing a provisional patent application allows you to defer the costs associated with examination to a later time. As provisional patent applications are held confidentially by the USPTO, unlike regular, non-provisional patent applications, there is no public disclosure. This is significant, because public disclosure of your proposed invention can either destroy or at least jeopardize your ability to patent the invention later on. So long as you or anyone else does not disclose your proposed invention, you may continue to refile the provisional application and continue to obtain an updated priority filing date (the priority filing date of a provisional applications is only valid for 12 months from filing) until a time in which you are ready to proceed with a regular, non-provisional patent application.
Another benefit of filing a provisional application is that provisional patent applications are assigned a filing date, even when the proposed invention may not be fully finalized. The filing date is important, because it essentially establishes your place in line to obtain a patent. In most countries around the world, patent applications are examined on a first-to-file basis. Meaning, patentability is assessed based on the date on which an application has been filed, not invented. Additionally, the number of patents filed is ever-increasing, and filing as early as possible means there will be less patents similar to yours than if you file a few years down the road. Accordingly, this creates some urgency to be the first person to apply for a patent for a proposed invention.
When assessing patentability, it does not matter who is the first to invent something; rather, it is crucial that you are the first-to-file a patent application for your proposed invention. If you delay in filing a patent application for your proposed invention, it is possible that someone else may file an application for a patent or disclose the proposed invention before you. As a result, any prior filed applications will have priority over your filing and any prior public disclosures may undermine your potential claim to patentability. Further, upon filing a provisional patent application, your proposed invention would be considered “patent pending”. Including this indication on your product packaging helps signal to consumers that your product is new and innovative -- and may only be available from you. Further, it signals to your competitors that a patent has been filed, deterring copying.
The time in between filing a provisional patent application and a regular, non-provisional patent application can also be very valuable. Since a filed provisional patent application secures a filing date, it provides an opportunity to publicly disclose your proposed invention without concern that your own non-confidential disclosures could undermine the patentability of your proposed invention. Further, should anyone see your proposed invention and decide to file a patent application, you would have already secured a prior filing date. Note, you must file a regular non-provisional patent application no later than 12 months after the first provisional patent application in order to take advantage of the benefits associated with filing a provisional application.
Once you have filed your provisional patent application, you have secured your place in line. And, if you do not plan to re-file the provisional application, you can make public disclosure of it without losing your opportunity to file a regular application later. Accordingly, once a provisional patent application is filed, it is possible to begin selling or marketing the proposed invention in order to test the market and determine it is worthwhile patenting the proposed invention or go ahead and pursue patent protection at all. You may be able to secure investors, for example, who offer to subsidize or cover the cost of the patent process in your target markets. Alternatively, or in addition, as you begin selling your proposed invention, you will be able to gauge the public’s response, the size of the market, etc., which will help inform an intellectual property strategy, or whether to acquire a patent at all.
For example, if the market is small, the cost of pursuing patent protection may outweigh the benefit and may not be a worthwhile investment. The time after filing a provisional patent application can also be useful for securing financing for, for example, the regular, non-provisional patent application. Alternatively, if, for example, you want to licence your proposed invention, you can use this time to shop your new innovation to larger firms (ideally with the additional precaution of a suitable non-disclosure agreement). Taking the preliminary step to file a provisional application is helpful when pitching to potential investors since it can signal that you are serious about pursuing patent protection for your proposed invention.
On the other hand, if you decide not to proceed with a regular, non-provisional patent application you will have spent only a fraction of that which would be spent on a regular, non-provisional patent application.
To summarize, the major advantages of filing a provisional patent include:
- Ability to further refine the proposed invention
- Deferral of patenting costs
- Maintained confidentiality of proposed invention
- Securing priority filing date
- Obtain “patent pending” status
- Ability to begin disclosing proposed invention, without compromising patentability
- Opportunity to test the market
- Opportunity to secure financing or investment
To ensure that you are making a decision which will further your business goals and provide the appropriate protection for your proposed invention, contact us to consult with one of our experienced patent lawyers.
