What is a Provisional Patent?

A provisional patent application is a primary, succinct, and simplified description of a hoped-for patented object. It is  a place holder for a complete patent application.

The provisional application is valid for a year, during which time you can develop the idea and decide whether you would like to continue with a true patent application. Meanwhile, your rights to the creation you described are protected. Provisional applications have been used in the U.S. since 1995.

It is important to note that the U.S. Patent and Trademark Office does not fully review such applications, as they are temporary and will not necessary become active patents. The registration of the provisional patent simply protects your rights for a time. After the one year period, the provisional patent expires.

When to Create a Provisional Patent Application

  • When you need to secure your rights by a particular date, it is better to do a basic provisional application right away instead of waiting until you're able to file a complete patent application. You can replace this with a detailed application another time.
  • When you wish to extend the active life span of a pre-written patent, you can prepare a full-fledged patent application, but only file it as a provisional. Later, submit a non-provisional application. This earns you an extra year over the usual 20-year patent lifespan. It also affords you more time to consider revisions or updates.
  • You may need to delay the substantial cost investment. A complete, thorough, expert-advised application costs $5,000 to $20,000, in addition to other potential fees such as patent search costs, registration amounts, or unexpected legal fees. 

Why a Quick Patent is Necessary

Disclosing the details of your work, especially before you get the patent, may mean that someone else can use the data freely. They can even patent your idea before you do and therefore get full rights.

Sometimes, investors or manufacturers may pressure you for this data for understandable reasons. If possible, have them sign a non-disclosure agreement, though many people do not wish to do so.

Some laws specify that any communication of your idea before the patent can later prevent you from receiving it. So be very careful not to disclose this information too soon. 

In 2013, the U.S. began the first to file system. This means that the first person to file the patent obtains the rights. Prior to this inventors could document their work to prove the development timeline. This is no longer applicable.

Therefore, a patent application is advised, along with the use of the label "patent pending" while you're waiting. This means people can use your invention openly in the meantime. Most people will not risk being sued to steal a new invention that is likely to be granted a patent.

Benefits of a Provisional Patent

  • When filing is done early, it means the patent office has fewer problems ascertaining who owns the rights. This is imperative, especially in cases when multiple people file for the same rights.
  • By filing something early, you are able to hold on to your rights in the case of a loss of novelty.
  • A provisional application extends the life of your patent by one year.

How a Provisional Patent Application Differs from a Regular Patent Application

  • A provisional patent application is far less expensive. A complete patent application is $5,000 to $20,000, whereas a provisional application can cost about $100 to $300 when registering at the Patent Office. While the cost reduction is a benefit, you are truly only putting off the expense of a full application. However, you are saving a small amount on the government costs.
  • It is a simpler process. Even if you do it yourself, you don't have to do the Patent Application Declaration or Information Disclosure Statement, and your creative evidence and descriptions generally are less thorough.
  • If you do go ahead with a full patent application, you can claim the benefit of the provisional. What this means is the Patent Office may use your provisional filing date as the date of your patent filing.

Requirements for a Provisional Patent Application

  • An invention description must be included. It does not need to include claims, but it must have the best mode and enablement requirements. This is necessary in order for it to be used in upcoming filings.
  • Drawings should be included. Even though some people feel it's not necessary, it is important to offer a detailed description of the object.

Section 35 U.S.C 111(b) indicates this: "(b) PROVISIONAL APPLICATION. (1) AUTHORIZATION. A provisional application for a patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include (A) a specification as prescribed by the first paragraph of section 112 of this title; and (B) a drawing as prescribed by section 113 of this title.

  • The full name of the inventors or inventor
  • The fee for filing
  • A cover page with identification for the object. This is found on the website of the U.S. Patent and Trademark Office. This web page also offers details on how to put together your application and the requirements for all the necessary elements.

Risks of Using a Provisional Patent Application

A great many provisional applications are submitted that do not measure up to the qualifications. Such provisional patent attempts are often incomplete, insufficient, or ineffective. It is not a trivial thing to submit a low-quality provisional application. Downsides include:

  • You could waste a great deal of money and time.
  • Even if you correct the mistakes later and generate a more thorough application, the original, faulty application may be brought out in court or for assessment of statutes relating to novelty.
  • When there is an error in the provisional application, the final, non-provisional draft may not be filed at the right time. The creator may have relied too heavily on the due date of the provisional application. Given this dependence upon a faulty application, the creator risks losing rights and protection altogether during the time period in which the object is inappropriately covered.

Faulty Provisional Application: Case Example

An inventor in New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co. had a problem with a faulty provisional patent application.

The creator had made a brand new type of drill piece. The body was "angled with respect to the sonde housing."

This description was offered in the non-provisional application. However, the specifics of the angle were not offered in the first, provisional application.

In terms of timing, the creator put the drill for sale over one year before the non-provisional filing date. This means that the patent was actually not effective with the statutory bar section of 35 U.S.C. 102b—unless the patent is relevant to the date of filing of the provisional work. The specific expression of the angled drill was not specific enough in the first application, so the creator simply could not declare the benefit of forging it at that time. He could not enforce protection from the provisional application and the patent was rendered ineffective.

What To Do To Prevent A Faulty Application

The first thing to do to prevent this circumsntace—the potential results of a poorly drafted provisional application—is to work with a dignified and reputable lawyer. UpCounsel has a variety of highly skilled and trained lawyers.

A reputable patent attorney will be cautious. They avoid working with quickly or poorly devised provisional applications which offer little protection.

Likewise, reputable attorneys generally avoid offering a quick overview of an inventor's self-written application. This is because it is truly challenging to ascertain validity at the surface level. Patent research and analysis require a thorough review of both the creation and its active context, that is, the history of similar devices and regulations and patents associated with them.

To protect yourself and your invention, hire an attorney to thoroughly review and analyze the object and its earlier art. The lawyer should devise claims for your creation and then adjust the application to relate to the claims or concerns.

Only at this point will the provisional application be ready to be filed, and gestures toward a complete, non-provisional application can be made.

In this sense, endeavouring toward a provisional application may in fact not meet your needs or your budget. It may in fact be more financially astute option to venture for the full non-provisional.

There are, however, some benefits to starting with a provisional application.

What Does A Written Description for a Provisional Application Include?

  • The name of the creation
  • The creation's purpose/utility
  • The description of the included illustrations
  • Component parts or specific description of steps of the invention
  • Precisely how these aspects or parts work together, are rendered, or carried out
  • How to use the creation or make it work
  • The ideal mode or state of the creation

A provisional application's written description can also include the following:

  • Key benefits or offerings of the creation
  • Additional ways the invention can forge its outcome

Listing Inventors on Your Patent Application

It is mandatory for the inventor to  file the patent application. As such, the application is filed in that person's name. If there is more than one inventor, it can be put in the name of more than one person.

However, at least one of the inventors must be noted on the provisional and non-provisional applications. Otherwise, the provisional file is not effective  nor activated.

Similarly, if an individual was part of the invention's creation, they are considered a co-inventor. If a person added a formative piece to a blender, that person would be a co-inventor. The machinist hired by the inventor to manufacture the prototype, however, would not be a co-inventor.

Drawing the Invention

Illustrations make the provisional application complete. The goal is the same as for the complete application. It's to aid with the overall comprehension of your work. Very rarely, a written description is enough, but the USPTO strongly recommends including such drawings, not only for clarity, but also to protect your rights to the patent and prevent miscommunication or unwanted infringement.

Additionally, if you plan to ask for a utility patent at some point, drawings are especially relevant. When you request a utility patent, an Examining Attorney may look at the provisional application with its drawings against the non-provisional. They want to see that they add up and are in fact the same.

There are six formats for Provisional Application illustrations, as recommended by the USPTO.

  • Drawings of various views, such as from the top, the side, with parts disassembled, exploded, or from a perspective view
  • With numbers labelled, such as via sheet, figure, or reference
  • With schematics or flowcharts
  • With dashed lines or straight lines
  • In black-and-white, or with color photos
  • Generated via computer, or by hand

Repeated Provisional Applications

You may submit as many provisional applications as you wish for one creation.

If your project is developing at a steady rate, it's advisable to submit provisional applications thoughtfully, and as early in the process as possible. This helps track the development of your idea and protect your rights.

Every application can represent a new turn or milestone in its creation. These can also help the office find out the earliest possible priority date for advancing. Any ideas you offer through the process can be filed in a single non-provisional application before the expiration of the original provisional application.

Further Provisional Patent Application Precautions

Do a Thorough Job on Your Application

The goal of the provisional application is to protect your rights to the invention for a one year period. Therefore, it's important to claim that benefit by submitting quality work.

If the application is not accurately rendered, the Patent Office may ultimately, upon receipt of your non-provisional application, find that you did not have a patentable idea. Such a decision can harm you in the future if you attempt to pursue your rights in a claim. It can actually be used against you to prove that your idea was in fact not sufficiently developed.

Avoid Non-Experts

It is true that you can attempt to create a provisional application without the help of a lawyer. It is difficult to create a detailed and through application this way, but it can be done.

However, what you should not do is seek the counsel of those who have no experience for a lower rate. Some people claim to be experts in patent application writing but may not actually have the necessary certifications. This is especially common online.

It is true that patent advice is costly, but it may be best to find other ways to afford the cost—via investors, or doing a reasonable amount of research work on your own—rather than opting for non-reputable counsel. UpCounsel is one way to decrease costs, as we have many experienced lawyers who are willing to work at a lower rate via online correspondence.

It Might Not Protect You

A provisional patent does not grant you an actual patent. The purpose of the provisional is to protect your concept until you do apply for a true patent. Second, bear in mind that there is a relationship between the quality of the application and the protection it grants you (thus the tendency for significant legal fees in the preparation of a patent application).

If you do not do a thorough enough job in your provisional application, it might not cover you should you, in fact, need such protection. Since the Patent Office does not review provisionals, you truly have no way of ascertaining its validity until you apply it to a case of infringement. Your description in your provisional application may simply not meet the requirements of a full description. You may not learn this until it is submitted as a complete application later. 

Many provisional applications are put together quickly, without sound judgment. As a result, they are not very binding. When these problems are not identified until the filing of the non-provisional, all the resources, including time, spent on the first is wasted.

Sometimes a poorly written provisional can be used against you with claims that it was not novel. Even a later, improved non-provisional application may not be accepted on the basis of the provisional. The question is if you cannot aptly describe your creation, did you truly create it?

Proceed with a Provisional Patent Application

If you opt for a provisional patent application, you must be as clear and direct as possible, fulfilling the requirements and giving apt descriptions.

For help with your provisional application from expert lawyers who are reputable in this field, connect with us here on UpCounsel. We can help guide you so that you are protected and not disappointed later. You can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top five percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard and Yale Law and average 14 years of legal experience, including work with or for companies like Google, Stripe, and Twilio.