Depending on who you talk to, you might hear that filing a provisional patent application is always a mistake, or that it’s the right move every time. Many businesses have questioned whether filing a provisional application is worthwhile — or whether it’s more strategic to file a non-provisional directly.
To help understand whether a provisional patent application is for you, let’s take a look at what it is, when to file one, and the common mistakes to avoid when filing a provisional patent application.
WHAT IS A PROVISIONAL PATENT APPLICATION?
A provisional patent application is a simplified, informal filing compared to a non-provisional patent application. For example, you don’t need to include formal claims or an inventor declaration.
Unlike a (formal) non-provisional application, a provisional application automatically expires one year from its filing date, is never examined for patentability, and doesn’t mature to an issued patent.
A provisional patent application can be used to establish an early filing date with USPTO and foreign patent offices. But to ultimately receive a patent, you must file a corresponding non-provisional patent application within one year.
Provisional applications are not always the right approach. But under the right circumstances, provisional applications can be used as a strategic tool in developing a patent portfolio, and they’re often better than no patent application at all.
REASONS TO FILE A PROVISIONAL PATENT APPLICATION
For companies with unlimited funds and an army of patent lawyers ready to draft applications on a moment’s notice (you know who you are), you probably won’t need to file provisional patent applications.
For most companies, though, provisional patent applications can help get you adequate (though not always pristine) legal protection under constrained and uncertain circumstances. Here’s a look at some of the reasons you might want to file one.
1. ESTABLISH AN EARLY FILING DATE
In the U.S. and virtually all foreign venues, patent applications are evaluated based on their filing date. In particular, the patent office will assess the merits of your patent application against all prior art as of the filing date of the patent application.
(In a nutshell, “prior art” encompasses all patents and patent applications that were filed before your filing date, and all publications, products, and activities that were publicly available before your filing date. So establishing an early filing date can be extremely important.)
Filing a provisional patent application allows you to establish the “effective” filing date for a non-provisional application filed at a later time. This can improve your likelihood of success, as it eliminates would-be prior art that arises after your provisional application is filed.
Provisional applications can also be used to secure a “priority” filing date for applications filed outside the U.S., in foreign countries that are part of the Paris Convention — provided you file in that country within a year of your U.S. filing date. An early filing date can be especially important in many foreign countries, where there’s no “grace period” for public disclosures before the patent application is filed.
2. DOCUMENTATION FOR COMPETITIVE OR DEFENSIVE PURPOSES
A provisional patent application can be used to formally document your company’s technical developments as of a particular date (namely, the filing date), for competitive or defensive purposes.
As one example, your provisional application can serve as prior art against a competitor’s later-filed patent application. In other words, regardless of whether you end up getting a patent, your provisional patent application may prevent your competitors from getting a patent that covers your technology.
As another example, by filing a provisional application before a meeting with a collaborator or before attending a conference, you can show that the subject matter in the provisional application was developed independent of the collaborator’s input or information learned from the conference.
Finally, provisional patent applications let you use the “patent pending” label on your products and publications. This warns potential competitors that, if they move into your territory, they could face an eventual patent infringement claim.
3. WORK WITHIN SIGNIFICANT TIME OR BUDGET CONSTRAINTS
Provisional patent applications come with lower filing fees, fewer formalities, and virtually no formatting requirements. All this means that a provisional application can often be prepared and filed more quickly and for a lower cost than a non-provisional application.
Businesses often find themselves needing to file a patent application ahead of a fast-approaching public presentation or demo, or an upcoming product announcement. In these situations, provisional applications can be prepared and filed quickly, as a legal “best effort” to secure a filing date.
Alternatively, startups may not have enough cash to pay a patent attorney to prepare a full formal patent application immediately. Provisional applications allow you to prepare the best patent application possible under the constraints you’re dealing with, and then add refinements when you file the non-provisional application.
In both of these cases, the business can gain some degree of protection by filing a provisional application, which is often better than no patent application at all.
4. GAIN TIME TO REFINE YOUR IDEA
Provisional applications can be updated and re-filed multiple times over the one-year period, to create a series of provisional applications. This allows you to capture incremental improvements during the R&D process.
Although you won’t get the earlier filing date for the improvements, they can still be captured in a single patent application with the original idea, instead of requiring a separate filing.
Moreover, you’ll be able to preserve the confidentiality of your work. Provisional patent applications are not published, which means that even if you abandon your idea later on, you don’t have to worry about it being shared with the public so long as you don’t file a non-provisional application.
5. ASSESS THE VALUE OF YOUR INVENTION
Many times, businesses want to file a patent application very early in development — just in case their idea turns into something valuable.
That uncertainty may not justify the cost of a formal application, but the potential for high value could justify a modest investment in a provisional application. And if you improve the invention before you file the non-provisional, you can capture these later developments in the non-provisional application.
COMMON MISTAKES WHEN FILING A PROVISIONAL PATENT APPLICATION
Provisional patent applications offer a lot of benefits for businesses in certain positions — but if you plan to file one, beware! Here are some common mistakes applicants make.
FAILING TO BUDGET FOR A NON-PROVISIONAL FILING
Your provisional application cannot mature into an actual patent without a non-provisional application being filed within 12 months.
So even though a provisional application can provide a short-term, lower-cost solution, you also need to invest in the long-term solution by filing a non-provisional application.
Additionally, if the provisional application was prepared under time pressure or a constrained budget, you may need a significant amount of time and investment to prepare a strong non-provisional application.
SUBMITTING AN INADEQUATE APPLICATION
The benefits we’ve described apply only to inventions that are adequately described in the provisional application. If you don’t take the time to prepare a thorough written disclosure, and don’t have a patent attorney draft the provisional application in a way that will support broad claims in the non-provisional application, your provisional application will not provide the protection you need.
In other words, if your provisional application doesn’t support all the details in your non-provisional application, then you will not enjoy the benefits of the earlier filing date for any new or added details provided in the latter.
FEELING A FALSE SENSE OF SECURITY
And if you’re lulled into waiting the full year to file a non-provisional application, that could expose the application to more prior art against claims that were not adequately supported by the provisional filing.
No matter where you are in developing your patent strategy, it’s in your best interest to partner with patent attorneys who have the legal and technical expertise to lay the appropriate groundwork for an ironclad patent portfolio down the road.
Henry Patent Law Firm was built with innovative tech startups in mind — we’re all about building high-quality partnerships. Contact us now to start executing your patent strategy.
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Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.