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.”
Perhaps most importantly, since the United States is a first to file country and has abandoned its historic first to invent ways, 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 the 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 to initiate the patent process is because the lack of formal requirements make them cheaper to prepare and the filing fee due is much lower. In the provisional patent application, focus can be on disclosing the invention in its full detail while still preparing an exceptionally detailed application that costs only a fraction of the cost of a nonprovisional patent application.
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.
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.
Going it alone without a patent attorney
In terms of what you need to file, although a patent claim is not required in a provisional application, the written description and any drawings of the provisional application must adequately support the subject matter of your invention 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 you need high-quality professional drawings. 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.
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.
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 you 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.
Reality check and importance of disclosure
Let’s take a step back though. 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 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. That is why it is critical to disclose as much as possible. You only get 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.
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.
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. 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. You see, 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 do elect to file a provisional patent application, you 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 cannot be extended for any reason. Yes, virtually all deadlines at the U.S. Patent Office can be extended if you are willing to pay enough, sometimes several thousands of dollars) but the provisional patent 12-month deadline cannot be extended for any reason PERIOD. Therefore, an applicant who files a provisional patent application must file a corresponding non-provisional or regular patent application during the 12-month pendency period of the provisional application to benefit from the earlier filing of the provisional application.
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