What are provisional patent applications?

Provisional patent applications are a specific form of patent application that may be filed with the United States Patent and Trademark Office (the USPTO). When you file a provisional application, you get a filing date for the disclosure within that provisional application, but the provisional application is never examined. The provisional application will automatically lapse after a year without ever becoming a granted patent. The provisional application does not require formal drawings or claims.

A non-provisional patent application may claim priority to the provisional application if filed within one year of the filing date of the provisional application. As such, claims recited within the non-provisional application that are sufficiently supported by the disclosure within the provisional application may claim priority to that provisional application. Accordingly, while formal drawings and claims are not required, a provisional application does require a specification with sufficient detail and specificity to support the claims of a non-provisional application claiming priority to that provisional application.

A non-provisional application may claim priority to multiple provisional applications.

Are provisional patent applications published?

Provisional patent applications are not published during their active one-year period, and the disclosure within a provisional application is kept secret during that period.

Once it lapses, a provisional application is published only if a subsequently filed non-provisional application claims priority to that provisional application. If there is a priority claim, the provisional application will be published along with, and at the same time as, the non-provisional application claiming priority to the provisional application. If there is no priority claim once it lapses, the provisional application is never published, and its disclosure remains secret.

What are the benefits of provisional patent applications?

Priority Date Establishment: One of the primary benefits of filing a provisional patent application is establishing a priority date. This date becomes critical in first-to-file patent systems of the U.S. and most of the world's territories. By filing a provisional application, applicants secure their spot in the timeline, which can be crucial in legal disputes or competing patent applications.

Extended Development Time: Filing a provisional patent application allows inventors to buy time for further development and refinement of their invention. This extra time is valuable for conducting market research, securing funding, and perfecting the innovation before committing to the more extensive and costly process of filing a non-provisional patent application.

"Patent Pending" Status: Upon filing a provisional patent application, inventors gain the right to use the term "patent pending." This status alerts competitors and potential infringers that the invention is in the process of being patented, potentially deterring them from pursuing similar innovations.

Cost Savings: Provisional patent applications are generally more cost-effective than non-provisional applications. The filing fees at the USPTO are less than those of a non-provisional since the provisional application is not examined. The legal drafting fees may be less since the provisional application may not include formal drawings and claims.

What are the drawbacks of provisional patent applications?

Limited Protection Period: Perhaps the most significant drawback of provisional patent applications is their limited protection period. While they offer a temporary safeguard, inventors must follow up with a non-provisional application within one year to establish and maintain protection. Failure to do so results in the expiration of the provisional application.

No Patent Rights Until Non-Provisional Filing: Filing a provisional application does not grant patent rights. Full patent protection is only secured upon the filing and successfully prosecuting of a non-provisional application. Until then, the invention remains vulnerable to infringement.

Strict Filing Requirements: While provisional applications are less formal than non-provisional ones, they still require a clear and complete invention description. Failure to meet the filing requirements may result in a loss of priority date or rejection of the subsequent non-provisional application.

Are you thinking of filing a provisional patent application?

Provisional patent applications are a valuable tool for intellectual property protection for inventors and innovators. Understanding the benefits and drawbacks of filing a provisional patent application is crucial for those seeking to safeguard their inventions.

To discuss how we can help you draft and file a provisional patent application, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.