Don’t Hesitate On Patent Protection: Think Provisional Filing

By Jeffrey M. Kaden

For many companies and individuals, and especially with the coronavirus pandemic continuing to cause economic damage in the United States and throughout the world, it may well be cost-prohibitive for you to immediately file a full-blown formal patent application on your new innovation. However, this does not mean that you should delay filing for patent protection, or worse yet, not to file at all. There indeed is a viable alternative.

The alternative is what is known as a provisional patent filing.

A provisional patent application can usually be prepared and filed much faster and at far less cost than a full-blown conventional patent application. This is because a provisional patent application does not have to be written in the formal archaic way that a conventional patent application is written. In other words, a provisional patent filing does not have to be drafted with all the legalese that is required for filing a regular patent application; it just has to describe the invention in a such a way that one reading the provisional patent application would understand what the invention is, how it is made and how it works.

Moreover, formal patent drawings, which are required when submitting a conventional non-provisional patent application, are not necessary; handwritten sketches, on the other hand, are absolutely fine for a provisional patent filing, again so long as they, in conjunction with the written portion, fully describe the invention.

And a provisional patent application has a number of advantages:

1. A provisional patent application secures an early filing date in the Patent Office, which may prove to be critical, especially if others are working in the same inventive arena; in the U.S., as in most foreign countries, first to file with Patent Office wins.

2. A provisional patent application will enable you to delay filing a formal U.S. utility patent application (as well foreign country patent applications) for up to one year and still claim benefit of the provisional filing date; this gives you necessary time to explore whether the invention is commercially feasible as well as to obtain funding that can be used for preparing and filing the more expensive formal patent application.

3. The invention and related packaging and literature can be marked with a “patent pending” notice; this can provide you with a significant competitive advantage in the marketplace.

The one drawback to filing a provisional patent application is that a provisional application is never examined by the U.S. Patent Office, and therefore, can never issue as a U.S. patent. You must eventually file a formal non-provisional patent application (which does get examined by the Patent Office) if a patent directed to your invention is ever to issue.

So don’t give up on patent protection for your invention solely based on cost. Think “provisional’ patent filing. Not only does such a filing preserve your patent options later on, a provisional filing is itself legally advantageous.