You can file two types of patent applications with the U.S. Patent and Trademark Office (USPTO): a formal or non-provisional patent application and an informal or provisional patent application.

Unlike a formal or non-provisional patent application, the provisional application:

• does not require claims
• will not be examined by the U.S. Patent and Trademark Office
• cannot issue as a U.S. Patent
• will automatically become abandoned one year after its filing date

This provisional application merely allows a later-filed non-provisional patent application to benefit from the provisional application’s earlier filing date. To obtain this benefit, you must file a non-provisional application during the one-year pendency of the provisional application. After filing a provisional application, you may use the term “patent pending” during the one-year pendency of the provisional application in connection with marketing materials or commercial offers.

This benefit only extends in the non-provisional application to the subject matter which was initially supported by the provisional application.  The materials forming this provisional filing must describe the later-claimed invention, and the way of making and using it, in such full, clear, concise and exact terms so as to enable any person skilled in the field of the invention to make and use the invention without an unreasonable amount of experimentation. However, you do not need to include matters commonly known or understood by persons of ordinary skill in the field.

There are advantages and benefits to filing a provisional patent application.  However, there are also drawbacks.  It is important to understand why a provisional patent application may be advantageous or a bad approach.

Benefits of a Provisional Patent Application

First, a provisional patent application has lower patent office filing fees.  When funds are tight, a provisional patent application can be a great way to get a patent application on file.  In addition, it gives you one year to obtain funding, market your provisional patent application, and decide whether you want to move forward with the non-provisional patent application and examination of the patent application.

Provisional Patent Applications are Optional and Can Be Costly

However, a provisional patent application is an optional first step in the patent process.  While a provisional patent application can be less expensive to file up front, the full patent process can end up being more expensive overall.  You still have to file the non-provisional patent application within one year of the filing of the provisional patent application.  In the end, you may end up paying more patent office filing fees and attorney fees to get the provisional patent application and the non-provisional patent application filed than if you simply filed a non-provisional patent application and skipped the filing of a provisional patent application.

Provisional Patent Applications Can Be Worthless

Some inventors believe a short and sweet one-page document will “protect” you.  This is incorrect.  It is important to understand the provisional patent application’s filing date only covers that which you disclose in the provisional patent application.  Thus, while a provisional patent application is technically a less formal document than a non-provisional patent application, it may be worthless.  The provisional patent application is only worth it if it includes all of the disclosure and information you need to include in the non-provisional patent application.  In other words, you should draft a provisional patent application just like a non-provisional patent application.  Simply put, a provisional patent application that is light on disclosure and missing important details may not protect your rights.

There is No Such Thing as a Provisional Patent

In addition, it is important to understand that there is no such thing as a “provisional patent.”  The filing of a provisional patent application is not the end – it is the very beginning of the process.  If you do not file a non-provisional patent application within one year, the provisional patent application will simply abandon.

Filing a Provisional Patent Application Slows the Patent Process

Very often, it may be desirable to obtain an issued patent as quickly as possible.  As noted above, filing a provisional patent application essentially can delay the process for up to one year.  Often, it can take years for an examiner to begin examining a non-provisional patent application after it is filed. A provisional patent application can add another year to this lengthy process.

There are number of benefits to filing a provisional patent application including lower patent office filing fees to obtain a filing date.  However, it a provisional patent application can make the patent process even more costly and lengthy.  Although provisional patent applications can be advantageous, they must be drafted with care.  The provisional patent application filing date only covers what is disclosed in the provisional patent application.

In some instances, filing a provisional patent application is the correct route to take.  However, in many situations you should not use one.  It is important to discuss patent filing strategy with your patent attorney and determine whether a provisional patent application would be advantageous.

If you have questions about a provisional patent application or would like to further discuss the differences between a non-provisional patent application and a provisional patent application, please reach out to FRESH IP‘s patent attorney, John Bednarz.