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Provisional Patent Applications

What is a Provisional Patent Application?

  • The “provisional” patent application system was created after the GATT treaty was signed in 1995. A provisional application may be filed without claims, is not examined or even read by anyone at the Patent Office, and, as the “provisional” name implies, is temporary. A provisional patent application expires exactly one year after filing and unless you file a utility application before the end of that one year period, you may be found to have abandoned your invention to the public domain.
  • The three main reasons to file a provisional application are: (1) in an emergency situation where a filing date is needed to protect rights while a utility patent application is prepared (for instance, getting something on file the day before you show your invention at a trade show), (2) where the inventor needs to limit costs while trying to determine if the invention would be commercially profitable, and (3) where the invention is expected to have a long market life span (the provisional application could, theoretically, add an additional year to the term of the patent.
  • Because provisional applications are not examined, they can never mature into an issued patent. There is no such thing as a provisional patent.
  • It is important enough to bear repeating: a utility patent application must be written and filed based upon the provisional patent application within one year (the life span of the provisional application).
  • A provisional patent application cannot claim priority from another application, foreign or domestic.
  • While provisional patent applications were intended by Congress to make filing easier for inventors, these same applications often become a trap for unprepared inventors. The main traps are: (1) missing the one year date (when a provisional application is abandoned, it is gone forever), and (2) inadequate disclosure (if the disclosure is not clear and detailed, the resulting problems may completely void the application altogether). Provisional patent applications also draw out the patent prosecution process, making it longer until you have an issued patent in hand (your competitors can only “infringe” your patent after it issues).
  • Preparation and filing of a provisional patent application typically costs 1/3 to 2/3 of the cost of preparing and filing a utility application. Then within one year, the inventor must also pay to have a utility application prepared and filed based on the provisional application. This can result in increasing total patent costs at least 1/3 to 2/3 over only filing a non-provisional application in the first place. However, this additional year gives an inventor an lower cost option to be patent pending for a year thus allowing the inventor to gauge market interest on their invention or to seek investors.