I often get asked, “should I file a provisional patent application?” Generally, a provisional patent application (“provisional application” or “provisional”) is a quick (and sometimes cheaper) way to begin the patent process. To help you understand if a provisional application is right for you, let’s take a look at what a provisional application is and when to file one.
1. What is a Provisional Application?
A provisional application is a type of utility patent application that is filed at the United States Patent and Trademark Office (USPTO). There are a number of types of utility patent applications (e.g., nonprovisional, continuation, CIP, divisional) an inventor can file to protect their technology and a provisional application is one of those types of applications.
A provisional application is an informal filing compared to a nonprovisional application. For example, a provisional application is not examined by the USPTO, informal drawings are acceptable, and you do not need to include formal claims or an inventor declaration or oath. However lax the requirements may be, a provisional application must describe as completely as possible the invention. If the invention is not thoroughly described, there is a chance you will not receive the benefit of the filing date of the provisional application.
A provisional application is a temporary placeholder that establishes an invention’s “priority date” with the USPTO and foreign patent offices. As we will discuss later, this is important when it comes to prior art and public disclosures.
A corresponding nonprovisional application must be filed during the 12-month pendency period of the provisional application to receive the benefit of the earlier filing date of the provisional application. If you decide not to file a nonprovisional application, instead choosing to, for example, protect your invention as a trade secret, the USPTO will keep your provisional application secret. And since your provisional application is secret and never published, it cannot be used as prior art against you or others.
2. Reasons to File a Provisional Application
Provisional applications, under the right circumstances, can be used as a strategic tool in developing a patent portfolio. Here’s a look at some of the reasons you might want to file one.
A. Establish Priority Rights to Protect Against…
Patent applications are evaluated based on the date they are filed. When your patent application is examined by the USPTO, the examiner assigned to your patent application will examine your patent application against all prior art before the filing date of your patent application. When you convert your provisional application to a nonprovisional application, the effective filing date of the nonprovisional application is the filing date of your provisional application. Because priority is given to applications that are filed first, and more than a 1,000 patent applications are filed daily, you’ll want to have a filing date as soon as you have an invention that can be adequately described through words, drawings, white papers, etc. to help reduce the amount of prior art that may be cited against your patent application, and to help avoid losing out on patent protection by someone who filed first.
A provisional application can also be used to establish priority rights for applications filed outside the U.S. provided you file in a country that is part of the Paris Convention and file within a year of your U.S. filing date. In many countries outside the U.S., public disclosure before filing a patent application can make it difficult, and sometimes impossible to obtain a patent in those countries. So before presenting your product/service at a trade show, selling your product/service, or releasing your product/service, consider filing a provisional or nonprovisional patent application to protect patent rights in countries outside the U.S.
Infringement lawsuits are very expensive, and companies with more resources often take advantage of startups and smaller companies by initiating a patent infringement lawsuit that only the company with more resources can afford. A startup can deter patent infringement lawsuits by building a patent portfolio that could be infringed by the resource-abundant company. If the company does bring a lawsuit, the startup may be able to avoid the lawsuit by settling out of court with a cross-licensing agreement.
B. Gain Negotiation Power
A provisional application can be used to provide leverage in a negotiation with a collaborator. For example, by filing a provisional application before a meeting with a collaborator, you can show that the subject matter in the provisional application was developed independently of the collaborator’s input or information learned from a meeting with the collaborator. Also, often times when companies enter a joint development agreement, the agreement will identify technologies owned by the respective companies. In some of these agreements, the reported technology may need to be accessed or licensed by the other company. By filing a patent application on relevant technology before the agreement, you can gain negotiation power with the other company once the agreement is over.
C. Get a Competitive Advantage in the Marketplace…
By Converting Customers
For startups, a key challenge is proving to inventors and potential customers that what they offer is unique and/or superior and that no one else can provide what they offer. A filed provisional application lets you use “patent pending” on your products and publications (e.g., marketing and packing). This may indicate to consumers and investors that the product is unique and can only be obtained from you.
By Deterring Competitors
Patent pending warns potential competitors that, if they move into your territory, they could face an eventual patent infringement claim.
Once you file a provisional application, you have 12 months from the date of filing to decide whether to convert your provisional application to a nonprovisional application. During this time, you can market your idea to companies, establish your business plan while gaining insight about moving forward. If you decide your technology is worth protecting, you can submit a nonprovisional application and claim the filing date of your provisional application. Also, the 1-year delay will not count toward the 20-year term of the patent.
Also, as you continue to work on your technology, you will likely improve it and want to capture those improvements. To capture the improvements, you can file another provisional application. In fact, you can file multiple provisional applications, and within 12 months of the filing date of the first provisional application, you can submit a nonprovisional application that claims priority to each of the provisional applications. This allows you to capture these later developments in a single nonprovisional application.
Provisional applications can typically be filed more quickly and for a lower cost than a nonprovisional application. For example, provisional applications do not require formal claims, and since the claims are the most challenging aspect of a patent application, provisional applications can be prepared and filed faster and cheaper than a nonprovisional application. Provisional applications also have fewer formalities, virtually no formatting requirements, and lower filing fees.
Oftentimes, businesses find themselves needing to file a provisional application before an upcoming public presentation, product release, or product announcement. In these situations, a provisional application can be prepared and filed quickly to secure a filing date.
Also, a provisional application can be an effective way to delay the costs in preparing a nonprovisional application while providing the best protection under the constraints you’re dealing with.