What is a Provisional Patent Application?

Josh Stockwell's IP Blog and Podcast

A provisional patent application is a sort of “patent-lite,” so to speak. When a completed provisional application is received by the patent office, it is assigned a filing date and a serial number. It expires after one year from the filing date.

You are given the benefit of having “possession” of any subject matter disclosed in the application as of the filing date, provided the disclosure is enabling for what is disclosed.

However, a provisional patent application, unlike a design patent application or a non-provisional patent application, will not be examined and will not issue as a patent.

A provisional application merely serves as a placeholder for a subsequent filed non-provisional patent application that claims the benefit of the filing date of the provisional application. A design patent application may not claim priority to a provisional application, though.

To claim the benefit of the filing date, you must file a non-provisional patent application within one year of the provisional application’s filing date and assert your claim to the filing date of the provisional in the specification and an Application Data Sheet (or ADS).

Why would you want to file a provisional patent application?

Three main reasons apply: Cost, Speed, and Delay. I know the last two sound like they conflict, but bear with me.

First, cost:

The filing fee for a provisional application is $130 for a small entity, half-that for a micro-entity. So, it is cheaper than filing a full non-provisional application. And, if you use a patent attorney or agent, many charge less for drafting a provisional than a non-provisional application.

Second, speed:

Provisional applications may be prepared quickly, making them convenient for when there is no time to draft a full non-provisional application or search the invention prior to filing.

A provisional application does not need to meet all the formal requirements of a non-provisional patent application, such as margins, font size, and other technical requirements of the specification. Formal drawings and claims are also optional.

Because the provisional application will not be examined, you are free to include photographs and color drawings, which avoids the necessity and delay of having a draftsman prepare formal patent drawings. The specification and drawings also do not need reference numbers.

A provisional application does not need oaths or declarations of inventorship and other application paperwork that non-provisional applications frequently require.

All of these factors allow you to prepare and file a provisional application quickly. Because the United States is now a “first to file” system, the faster you can get a patent application on file, the less risk there is that another will have beaten you to the patent office.

This flexibility of the provisional, however, can also work against you. An incomplete or half-baked provisional disclosure may not be enabling for your invention, resulting in a loss of the priority date. This situation could be fatal to obtaining a patent if an earlier disclosure was made. Therefore, to the extent possible, try to provide as much disclosure as possible in the provisional application. The more complete the provisional application is, the better.

Third, delay:

Because the provisional application lasts for one year, but doesn’t count against the patent term of a non-provisional patent application claiming priority to it, the provisional application allows you to delay your decision to prepare and file the more expensive non-provisional application. This feature allows you to explore whether there is a market for your invention or conduct further research and development or find investors, prior to making substantial investments, all without the risk of losing your patent rights.

In summary, provisional patent applications can be a useful tool for you to document your invention quickly, in a cost-effective manner, and allows you to delay your decision about filing a full, non-provisional application. However, care must be taken in preparing the provisional application to ensure it is enabling for the disclosed subject matter.