Provisional patent applications

What is a provisional patent application?

A provisional patent application (provisional for short) establishes a ‘priority date’ to an invention as of the date of filing. A provisional must be followed up by filing a conventional utility patent application within one year. The invention may be marked ‘Patent Pending’ during the year that the provisional is pending (as long as the marked product actually corresponds to what you disclosed in the provisional).

Important things to know

  • You only get filing credit for what you disclose

There are very few formal requirements for a provisional application. This leads many inventors to think they can submit very little information and still have a valuable patent application.

If the invention has a feature which isn’t disclosed in the provisional, but is needed for a claim of the follow up utility application – guess what – the provisional date is meaningless for that claim. Takeaway: make your provisional application as complete as possible, and include all features and even possible features of the invention.

  • Provisional patent applications can never mature into a patent

If you don’t proceed with a utility application with one year, the provisional is effectively dead. You do not have a patent. You cannot continue to mark ‘Patent Pending’.

  • A provisional patent application is not a patent

You do not at this point have any rights which can be asserted against an infringer.

Why file a provisional application?

An invention which is still under development may be a good candidate for a provisional application. Here are some reasons why:

  • A provisional can be submitted for a reduced cost compared to a utility application
  • You can market the invention for a year before deciding to submit the higher cost utility application
  • If you discover in development that additional features or different features are needed, these can be included in the utility application (however, they will not be given the provisional priority date when examined against prior art)
  • The provisional will not be published
  • The year in which the provisional is pending does not count against patent term

Why not file a provisional application?

  • If development of the invention is complete, directly submitting a utility application is the fastest approach to obtaining a patent.
  • If the invention has already been publicly exposed, you have already started a one-year clock (“grace period”) during which you can file a utility patent application. Filing a provisional does not reset this clock! In general, if a utility application is not filed within a year period a patent can no longer be obtained for the invention.