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What Is a Provisional Patent Application?

By: Christopher Heer, Rebecca Silverhart, Annette Latoszewska, | Last updated: February 4, 2020
A provisional patent application is a unique feature of United States (U.S.) patent law, whereby an inventor may file a preliminary, incomplete application with the U.S. Patent and Trademark Office (USPTO) to secure a filing date, which may later be relied upon in a priority claim in a regular, non-provisional patent application. Accordingly, a provisional patent application can be a strategic tool if you are contemplating pursuing patent protection.

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 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. 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. Accordingly, provisional patent applications are typically an approximation of a regular, non-provisional patent application.

With this, there are typically costs savings since there are fewer requirements to fulfill and it is less onerous to prepare which, in turn, 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) 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.

Further, the fact that a provisional patent application is never examined and is held confidentially by the U.S. Patent Office, can be a 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, so long as you or anyone else has not disclosed 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. 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 my undermine your potential claim to patentability. Further, upon filing a provisional patent application, your proposed invention would be considered “patent pending”.

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.

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. 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. If you decide not to proceed with a regular, non-provisional patent application you would have only spent only a fraction of that of 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 consult with one of our experienced patent lawyers.