Filing Provisional Patent Applications for Fun and Profit!

Written By: Andrew Berks

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A Brief Guide to Provisional Patent Applications for Scientists, Engineers, and Executives

Many people have heard about provisional patent applications and may have a vague concept that it is somehow less expensive to file a provisional patent application and get a foot in the door, so to speak, with a provisional patent application. But in our experience, confusion and misunderstandings abound about what provisional patent applications really are, what rights they confer, and how to do it right. This post will briefly explain the process to help inventors, scientists, engineers, and executives manage this valuable tool properly.

Provisional patent applications provide a mechanism for filing a patent application at lower cost than a regular patent application (i.e., a nonprovisional patent application), but as they say, limits apply. Let’s discuss some of the features of provisional patent applications.
Provisional patent applications have no specific formatting requirements and do not require claims. Regular patent applications (nonprovisionals) must have at least one patent claim and have formatting requirements such as fonts and line spacing and are expected to comport with a standard outline and arrangement of sections. While not an absolute legal requirement, failure to follow the outline may lead to difficulty in prosecution. However, these features are not required for provisional patent applications. Legend has it that drawings on napkins have even been filed as provisional patent applications. So have journal article manuscripts and PowerPoint presentations. This permissive informality means that non-experts can safely file provisional patent applications.

But there is an important caveat – a provisional patent application must describe the complete invention. Patents are now a first-to-file game, so if two inventors have a similar invention, the first inventor to file has seniority and can block a later filed patent application. As a practical matter, a patent filing date also cuts off prior art, meaning that publications, patents, websites, or any other public disclosure that was made public prior to your filing date (called “prior art”) can be used against you in obviousness arguments. So, a relevant disclosure published after your filing date is not prior art and can’t be used against you.

Also, in the first-to-file era, any subject matter in a patent application is only accorded the filing date in a patent application. Thus, if you have an invention ABCD, but the provisional only discusses ABC, and D isn’t added until a later provisional or the nonprovisional, element D will only get the benefit of its filing date. So prior art relevant to D published up to the date D was filed can be used against you.

This timing feature can be critically important, and one way provisionals can be used is if an inventor needs to make a disclosure in a hurry (we know this happens!), or if you think a competitor is about to make an important disclosure. You can quickly file informal documents that can protect your rights down the road. Moreover, investors do not want to deal with non-disclosure agreements and filing a provisional patent application gives you protection to disclose to potential investors or business partners critical details without fear that an invention can be hijacked.

Another benefit is that by drafting a provisional that comports with non-provisional filing requirements, the applicant front-loads drafting work that may reduce expenses when the non-provisional patent application is put together. So if you file a provisional application yourself, or file a rough document to get an application on file in a hurry, prudent inventors have a patent attorney or agent draft a document that looks like a real patent application at the earliest opportunity. 

One of the most critical features of provisional patent applications is they only have a life of one year. For example, if you file a provisional patent application on May 1, 2022, you must file a nonprovisional patent application claiming priority to the provisional patent application on or before May 1, 2023. But a desirable feature of this limitation is that you can file multiple provisionals over the course of the year, and a non-provisional application can claim priority to all of the provisionals filed in that year. So as your thought process related to an invention evolves, you can (and should) file updated provisionals.

Along with the limited lifespan of a provisional patent application, provisionals are not sent to a patent examiner and are not issued. There is no such thing as a “provisional patent” – only a provisional patent application. To get an issued patent, a nonprovisional patent application must be filed and prosecuted to issuance. 

Provisional patent applications have effect worldwide by international treaty. So, for example, a provisional application filed in the US can be the basis of a non-provisional patent application filed in Europe. Likewise, the lifespan of a provisional patent application is one year in all countries. Provisionals also can be the basis of a PCT international patent application.

Finally, lets address the DIY question – should you file a provisional yourself? Obviously, as patent attorneys, we are a little biased, and our best advice is that any patent application should be handled by an expert. But - if you do file a provisional patent application yourself, we strongly recommend consulting with a patent attorney or agent at the earliest opportunity. Even though provisionals have no legally mandated formal requirements, a best practice is to produce and file a provisional patent application that looks like a real patent application. A patent attorney can also spot and fix problems that may haunt you in prosecution or future patent challenges. Also, if the patent owner can look back at the history and point to a provisional that looks like a real patent application, that will be enormously helpful in future patent challenges. 

We can provide specific advice for your situation, and we draft and prosecute patent applications routinely. Please reach out to us with any questions.

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