There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a provisional patent. The first thing that needs to be said is that there is no such thing as a provisional patent. Instead, what you file is called a provisional patent application. Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a patent pending. Provisional patent applications, done properly, are a great way to take a first step toward a utility patent.
Now that the United States has become a first to file country and abandoned our historic first to invent ways (see A Brave New World — First to File Becomes Law) it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.
Of course, a provisional patent application must be understood as nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States. Still, there are substantial benefits to beginning with a provisional patent application. As with most things in life, however, there are pitfalls that can and do trap the unwary and unknowledgeable.
Why provisional patent applications are a good idea
One reason I like to suggest starting with a provisional patent application as a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a micro entity. See USPTO Implements Micro Entity Discount. Regardless of the filing fee to be paid to the USPTO, provisional patent applications cost less to prepare from an attorney fee perspective because there are no formal requirements, which means we can focus on disclosing the invention in its full detail while still preparing an exceptionally detailed application that costs a fraction of the cost of a nonprovisional patent application (i.e., regular patent application).
Many patent attorneys and patent agents will question whether you can really prepare a provisional patent application while spending less time than preparing a nonprovisional patent application. I am here to tell you that it is not only possible but we do it all the time and so do many other attorneys. Describe whatever you can, file a provisional patent application and work toward perfecting the invention and seeing if there is a market. That is how provisional patent applications are best and why they are a valuable tool for those with a limited budget, which at the end of the day is everyone in the patent space. No one has enough money to protect everything they invent, not even mega-giant tech companies. So you take responsible steps forward to secure rights once you reach the point where you have something patentable.
Some attorneys will tell you that you should never file anything other than a nonprovisional patent application. That advice, in my opinion, is simply inappropriate for several reasons. The U.S. is now a first to file nation, which absolutely positively needs to be interpreted as file first! It is entirely possible, if not likely, that things that are disclosed even a single day before you file your patent application will ultimately be prior art that can be used to defeat your claims. The grace period, which was once strong and absolute is now extraordinarily weak and practically nonexistent in real life. That means you need to file as soon as you can after realizing a patentable invention, which necessarily means you will want to file something before you are finished working on your invention. Provisional patent applications are excellent tools for inventors who are continuing their work on their invention. Describe what you have at the moment and file it as a provisional patent application. Then when you are done working on the invention, or before the provisional becomes abandoned at 12 months (whichever is first), file the nonprovisional patent application that includes the earlier described aspect of your invention as well as any improvements or additions.
With most provisional patent applications the 75-25 rule applies. To get to 75% complete it takes 25% of the time and the final 25% will take 75% of the time. Thus, the approach to provisional patent applications is to make sure you have all the disclosure we need later when we will prepare the nonprovisional patent application. This can include attaching one or more supplemental documents to a drafted provisional patent application, it can and usually does include filing many drawings, sketches, and even photographs.
Assuming you have filed an appropriate provisional patent application you can market the invention without fear of losing patent rights, generating cash to proceed with development or further patent activities. In other words, the provisional patent application is an interim step along the road to a patent.
When is a provisional patent application best?
In many, if not most or even nearly all, situations the invention as you initially conceive of it will not be the invention that you ultimately want to patent. Many times you will come up with an invention and want to protect it but you know you will need to continue working on it. There are things you want to make better, things you need more time to research and develop and in many cases you are seeking to obtain patent pending status before you have 3D renderings, engineering drawings or even an intermediate prototype. In this context you simply cannot possibly describe everything you will ultimately want to describe because you don’t have the invention complete in its full glory. This is why the 75-25 rule almost always applies to drafting of provisional patent applications
As you progress forward with your invention you learn more each step of the way. It is best to file a patent application as soon as possible, so consider filing a provisional patent application as soon as your invention is concrete and tangible enough to describe. Then as you make improvements you can file another provisional patent application if your want, or just move to a nonprovisional patent application. If you are working on your invention you should not be filing a nonprovisional patent application because you cannot add new subject matter to a nonprovisional patent application. You can, however, wrap together any number of provisional patent applications that have been filed within the last 12 months when you file your nonprovisional patent application. Thus, provisional patent applications are absolutely ideal when you have something that could be protected now but you are continuing to work on refining, perfecting and supplementing the invention.
Another key benefit of a provisional patent application is that the Patent Office will not do anything with the provisional patent application unless and until you file a nonprovisional patent application claiming the benefit of the priority of the provisional patent application filing date. This means no more PTO fees and no additional attorney’s fees unless and until you want to move forward. Thus, you can lay the foundation for obtaining a patent, have a “patent pending” and conserve funds in the process. In my judgment the benefits are enormous. Critical to remember, however, is that a carelessly prepared provisional is a complete waste of time and money.
The importance of disclosure
Let’s take a step back. As already eluded to, if you want to obtain a patent you are eventually going to have to file a nonprovisional patent application with the U.S. Patent and Trademark Office. In fact, you will need to file a nonprovisional patent application within 12 months of the filing of your provisional patent application in order to claim the benefit of that provisional filing. If you do file the nonprovisional patent application within 12 months then the filing date of your nonprovisional patent application will be deemed to be the filing date of your earlier filed provisional patent application, at least with respect to whatever you disclosed in the provisional patent application.
It is critical to disclose as much as possible. You only get the benefit of an earlier filing date (the entire purpose and benefit of a provisional filing) if it was disclosed appropriately. So it is best to think of the provisional patent application as a lower cost way of starting your journey toward receiving a patent, but it is incorrect to think of the provisional patent application as a cheap way to start the patent process. The fact that it is lower in cost and doesn’t require formalities doesn’t mean you shouldn’t take it seriously. A poorly prepared provisional patent application offers no benefit whatsoever and can come with significant down side later.
A Provisional Patent Reality Check
Now for a reality check. Yes, when most patent attorneys prepare a provisional patent application it costs less because the attorney does not generally need to spend as much time as they would preparing a nonprovisional patent application. It is important to understand, however, that if you are hiring an attorney to prepare and file the application the fact that less time is required does not mean that little or no time is required. There is a big difference. The specification and drawings need to be complete, broad in terms of what is described and specific to make sure you are meeting all patentability requirements as of the date you file the provisional patent application. Cutting corners on the description of the invention in a provisional patent application makes it useless.
The reason that cutting corners makes a provisional patent application worthless is because in the United States in order for a patent application to be useful to ultimately lead to the protection of an invention the application must be complete as of the time of filing. This leads to a critical question though, namely what does it mean for an application to be complete?
In general terms, a patent application will be considered to be complete when the invention is described so that someone else familiar with the technology could both make and use the invention having only read the patent application that is filed. In other words, your patent application needs to explain the invention with as much detail as possible. Essentially, you want to provide a description on par with the level of detail and explanation that would be included in a good instruction manual that describes both use and making of the invention.
Alternatives and Variations in Provisional Patent Applications
Anything that is not included in the provisional patent application is not considered to be a part of your invention. For this reason you may hear patent attorneys explain that a provisional patent application is helpful to protect whatever is included in the application (as I said above). Said another way, the provisional patent application is only as good as the level of detail you include, which is why you want to not only describe your invention but also any possible alternatives and variations that are known to you at the time of filing. See Defining the Full Glory of Your Invention.
When you prepare and file any patent application you want to make sure you cover not only what you have specifically invented, but you want to include alterations and variations that can be contemplated because if and when you start making money competitors will appear. The more scrupulous of those competitors will seek not to infringe upon your rights, which means they will seek to compete as closely and directly as possible but in a way that doesn’t technically and literally mimic your invention. Variations and alternatives are crucial to any patent application and provisional patent applications are no exception.
Another critical thing to remember is that alternatives and variations can be included in an application even if they are not optimal, and even if they do not work very well. This is where inventors frequently make big mistakes. Why would anyone want to do something that isn’t optimal? Look at the knock-off business that exists in any major city in the world. There is plenty of money to be made selling inferior products. You want a patent that covers what works best and what works period. If you were the first to invent the automobile you would want to have your patent cover the Yugo version, the Cadillac version and the Ferrari version and everything in between. So you need to think of your invention not only as what works best, but what works; no matter how crudely.
Time is of the Essence
If you do elect to file a provisional patent application you do need to understand that a provisional application remains pending at the Patent Office for only 12 months from the date it is filed. I know this was mentioned above, but it is worth mentioning again because it is an absolute hard and fast deadline that can be extended only in the most rare and extraordinary circumstances. Yes, virtually all deadlines at the U.S. Patent Office can be extended if you are willing to pay enough, and there are some circumstances under which you could claim priority to a provisional application filed up to 14 months earlier, but to claim priority after 12 months and up to the 14 month point the cost is very high — currently $1,700. Entitlement to this additional 2 month period is also very restricted. Therefore, it is critical inventors understand that they realistically have only 12 months to file a nonprovisional patent application and not fool themselves into thinking they have 14 months instead.
Patent Drawings and Provisional Patent Applications
In terms of what you need to file, although a patent claim is not required in a provisional application, the written description and any patent drawings of the provisional application must adequately support the subject matter of your invention in order to be useful later to establish priority. What this means it that care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed nonprovisional application. Drawings are your best friend in any patent application, and high quality professional drawings can be obtained for between $50 to $100 per page.
Many inventors seek to cut corners to save money, and I completely understand the need to conserve. Drawings in a patent application is not a place to conserve. Drawings are worth at least 1000 words and forgive a lot of accidental mistakes in the written disclosure. It is better to think that you MUST have professional drawings in a provisional patent application. Someone I have used frequently and have always been happy with is Autrige Dennis at ASCADDEX Patent Illustrating. Autrige is not a sponsor of IPWatchdog, just a good guy who has provided good service to my clients at a very reasonable price. The single best way to expand any disclosure is by having high quality patent drawings. The more the better in my view.
Going it alone without a Patent Attorney
For those who want to take the plunge and prepare their own provisional patent applications, whether out of desire or necessity, consider The Invent + Patent System. This is an online, self-help tool I created that helps inventors create their own provisional patent application. The cost to use the system is $99. For this price you get to use the system, which will help you create your own patent application, and then you receive instructions on how to format the application and file it yourself. This system has been in use for many years, and it is an excellent way to save money while still getting quality output. It is, however, a do-it-yourself system.
When I developed the Invent + Patent System I created answer templates that can be used and multiple technology relevant examples that can be mimicked. These answer templates and examples, when used, force inventors to provide the critical information that will be required to ensure a complete application. This works to keep costs down because it is a collaborative effort and you are directing the process and providing the critical invention information rather than paying an attorney to describe what you know best — your invention.
For some good additional reading on this and related topics see Invention to Patent 101: Everything You Need to Know About Getting Started. See also:
- Disclosure Requirements in Software Patents: Avoiding Indefiniteness
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
- Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
- Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Errors in Issued Patents as a Measure of Patent Quality
- Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
- Why the Patent Classification System Needs an Update
- Understanding What a Design Patent is Not
- Design Patents: Under Utilized and Overlooked
- Deciding Where to Obtain International Patent Rights
- When to Use the Patent Cooperation Treaty—and Why It’s So Popular
- Why and When Design Patents are Useful
- PCT Basics: Obtaining Patent Rights Around the World
- ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
- Successful After Final Petitions Can Help Advance Prosecution (Part V)
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- WIPO’s INSPIRE Offers a New Way to Select Databases for Patent Searches Involving Machine Translations
- Understand Your Utility Patent Application Drawings
- Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First
- Implications of Filing Subsequent Patent Applications in the United States (Part III)
- Types of Subsequent Patent Applications in the United States (Part II)
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Applying for a Patent in Germany
- Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO
- Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table
- Patent Office Insights from Two Former Examiners
- Conventional Patent Wisdom Revisited
- Develop Your Database of Templates for Responding to Office Actions
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- Four Things C-Suite Executives Need to Know About Patents
- Starting the Patent Process on a Limited Budget
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
- Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- How Can I Sell an Idea for Profit? Unlocking the Idea-Invention Dichotomy
- Keeping a Good Invention Notebook Still Makes Good Sense
- Patent Pending: The Road to Obtaining a U.S. Patent
- Why do you want a Patent?
- Moving from Idea to Patent: When Do You Have an Invention?
- Protecting an Idea: Can Ideas Be Patented or Protected?
- Investing in Inventing: A Patent Process Primer for Startups
- How to Write a Patent Application
NOTE: This article was originally published December 25, 2007 and has since been updated several times, most recently on May 13, 2017..