Why You Should File a Provisional Patent Application First

Individual inventors, startups, and other types of businesses that invest in the development of new technologies oftentimes conceive a new and valuable invention. Patent protection immediately comes to mind, but the type of patent application to file depends on a plurality of factors, each of which is unique to the particular applicant.

In the United States, an applicant for patent has the option of applying for two different kinds of U.S. utility patent applications: a provisional application and a nonprovisional application. In addition, an applicant can also file an international utility patent application in the U.S.

A brief overview of the provisional and nonprovisional patent applications may be needed as background in order to put things in perspective.

A nonprovisional application is the traditional kind of patent application. It must comply with all the formalities and substantive requirements of patent law. The nonprovisional patent application is examined and can be granted as a U.S. patent.

The nonprovisional application contains a description of the invention as well as claims drawn to the invention. The claims define the legal metes and bounds of the applicant’s property, much like the metes and bounds in a deed.

A provisional application, on the other hand, is a patent application which is not examined by the government. It need not comply with many of the formalities of patent law, but it must comply with the substantive provisions. After filing a provisional application, the applicant needs to “follow up” by filing a traditional nonprovisional application within one year of the provisional application’s filing date. The “follow up” nonprovisional patent application will claim priority to the provisional application; thereby it would have the same effective filing date as the provisional application. The “follow up” nonprovisional application would then be examined by the government.

A natural question may stem at this junction: why should I file a provisional application since I would have to “follow up” with a nonprovisional application anyway? The answer is: a provisional patent application affords the applicant a filing date for the invention at a minimal upfront cost. The filing of a provisional application also provides the applicant with the freedom to market the invention, to use the “Patent Pending” term, and to use the invention as leverage in a business transaction or in a legal dispute.

In more detail:

  • The upfront costs of a provisional application are small.
    • A provisional application has a very low government filing fee of $70 for an inventor that qualifies for micro entity status, or $140 for an inventor that qualifies for small entity status.
    • The applicant pays no government search fee and no government examination fee.
    • The drawings need not be formal, thereby avoiding the draftsman’s fee.
  • The applicant gets a filing date by merely filing a description of the invention and any necessary drawings needed to understand the invention (as well as a cover sheet identifying the inventor).
    • This is significant because in the current race-to-the-patent-office system, only the first person to file may be granted a patent. In other words, if another person files for a patent on the same invention afterwards, the later-filed patent application will be rejected.
    • However, the description of the invention in the provisional application must be sufficient to teach one of ordinary skill in the art how to make and use the invention.
  • Once that the provisional application is filed, the applicant has up to one year to file the “follow up” nonprovisional application. The applicant may use this time period to, for example:
    • Test the commercial success of the invention;
    • Use the invention as leverage in a business transaction or in a legal dispute; and
    • Label the invention as “Patent Pending” in order to enhance its value.

In addition to the above, in the U.S. only, the filing of a provisional application does not qualify as a public disclosure because the provisional application is held in secret by the government. Therefore, even if the applicant does not file a “follow up” nonprovisional application within the one-year period, the applicant can still file a patent application in the U.S. again for the same invention after the expiration of the one year period of the earlier-filed provisional application without having the earlier-filed provisional application used against the applicant. This applies in the U.S. only.

A U.S. provisional patent application can also be used as a priority document in an international patent application, for example, in a Patent Cooperation Treaty (PCT) application.

In conclusion, a U.S. provisional patent application is a vehicle that can be used strategically to test the short-term commercial success of the invention, to obtain funding, etc., at a relatively low upfront cost while providing the applicant with up to one year to decide whether to pursue patent protection in the U.S. and/or abroad.