By UpCounsel Patent Attorney Ashkon Cyrus

I get many questions from inventors and entrepreneurs about provisional patent applications. I recommend provisional patent applications in certain situations, and only when done the right way.

Provisionals Aren’t Examined

The first thing to realize is that a provisional application is never examined by the Patent Office. Therefore, you could never have a provisional patent be granted. You would need to ultimately file a non-provisional application for the application to be examined (and then allowed).

I typically recommend doing a comprehensive patentability search before filing a provisional patent application and receiving an attorney’s opinion on the chances your invention will ultimately be allowed.

It’s called provisional because you only have 12 months to file the non-provisional patent application. If you miss this deadline your invention is abandoned. No exceptions. Therefore, if an inventor has the funds and the invention is complete, filing a non-provisional to begin with might be the better route.

Provisionals Are Cheaper And Have Fewer Requirements

The main benefit to filing a provisional is that it has fewer requirements and is cheaper to file. For example, if you qualify as a micro entity, the filing fee for a provisional is currently only $65.

A provisional patent allows you to go out and market your invention without the fear of losing any potential patent rights. The last thing an inventor wants is someone stealing their novel idea and filing it at the patent office.

A provisional application that accurately describes an invention will be granted a priority filing date. As the United States is a first to file nation, the filing date is extremely important in establishing priority against prior art that can defeat your claims.

Provisionals Are Useful When You Still Have Improvements to Be Made

Provisional applications can also be useful when you have improvements to be made on the invention you are working on. You can file additional provisional applications for any improvements and combine multiple provisional patent applications that have been filed within the last 12 months when you file your non-provisional patent application. You can also add in any new developments in the non-provisional itself.

Do it Right – A Bad Provisional Is a Waste Of Time and Money

However, a shoddy provisional application is a complete waste of money. In order to obtain the filing date, the provisional application must meet all the requirements of patentability.

What does this mean? The specification of the invention needs to satisfy the disclosure requirements of 35 U.S.C. 112 as of the date it is filed. In addition to the specifications, the provisional application must include all drawings necessary to understand the invention,the names of all inventors, the appropriate filing fee and a cover sheet that identifies the invention. While not necessary, I also highly recommend at least a base claim to explicitly define some sort of scope in the provisional application.

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About the author

Ashkon Cyrus

Ashkon Cyrus

Ashkon graduated with honors from the George Washington University law school and also has a bachelor's degree in Computer Science from the University of California at Santa Barbara. Ashkon brings expertise in patent law, having represented some of the largest technology companies in high stakes patent litigation.

Prior to starting his own practice, Ashkon was an associate at a top tier international law firm for almost 4 years, specializing in IP Litigation and Patent Law. He has prosecuted over a hundred patent applications in a wide range of technologies. He lives in Los Angeles but represents clients throughout the country.

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