Key Takeaways

  • Provisional applications do not require claims, but including them can strengthen priority rights and reduce risk of inadequate disclosure.
  • A well-drafted provisional should satisfy enablement, written description, and best mode requirements, even if claims are not included.
  • Poorly drafted provisionals risk narrowed claim interpretation and can jeopardize future patent rights.
  • Internationally, U.S. provisional filings can support priority claims abroad, provided they meet disclosure standards.
  • Inventors should treat provisionals seriously—more like a full application than a placeholder—to avoid pitfalls.
  • Licensing and investor due diligence often scrutinize provisional integrity, making thorough drafting essential.

Provisional patent claims outline the elements of an invention that are protected against being illegally recreated, sold, or used by another person other than the inventor. Whether claims should be included in a provisional application is controversial in the patent community.

Should Provisional Patent Applications Have Claims?

Claims ensure appropriate enablement and disclosure in instances where a provisional patent is processed quickly or on a small budget. Including provisional claims in the application establishes an explicit record associated with the first filing date. However, many patent lawyers won't be too strict about including claims in provisional applications since they are likely to be removed later.

Many applicants fear that provisional claims leave inventors susceptible to file-wrapper estoppel, but there's no evidence that new claims in a regular patent application would generate this effect.

The U.S. Patent Office will take provisional applications without claims, but the regular patent application must be filed within 12 months of the provisional to take over the filing date from the provisional application. Without the first date, any publication including the invention can restrict its ability to be patented. It saves time and money to exclude claims, but it can be costly in the long run during the valuation of intellectual property.

The potential liability that stems from poorly drafted patents has caused legal professionals to advocate for including claims in provisional applications. Without these claims, the inventor might not be protected from future claims. There is no penalty for adding claims to a patent application later on, but all added claims must meet regulations and statutes.

When changing a provisional application to a regular patent, content revisions should be made with potential effects on future claims in mind. It's important to remember that future changes are likely to be examined under the invention's scope.

Why, How, and What to Claim

When drafting a provisional patent, inventors should consider the types and scope of the claims that might be included in any application filed at a later date, but they can expect to benefit from the provisional's filing date.

To gain the benefit of the provisional filing date, added claims in the regular application have to corroborate provisional claims. Many provisional applications might never be subjected to litigation or prosecution, but in the event it happens, the scope of added claims in the provisional application is quite important.

Subsequent patent applications are better if patent lawyers do the drafting and understand there are many things inventors do that result in their rights becoming compromised or void.

Requirements of Provisional Applications

Provisional applications fall under Title 35, which requires that applications meet the written description, best mode requirements, and enablement of U.S.C. § 112 in order for an application filed at a later date to claim the provisional filing date.

Interestingly, Section 111(b)(1) necessitates applications must have a specification described according to the first paragraph of patent law Section 112, as well as diagrams if needed. Section 111(b)(2) states that a claim isn't required in provisional applications.

Common Mistakes in Provisional Filings

One of the biggest risks in filing a provisional application is assuming that minimal disclosure will suffice. While the USPTO does not require claims, oath, or an information disclosure statement for a provisional, courts have repeatedly emphasized that only adequate disclosure will support later claims. Narrow or vague descriptions can lead to narrowed claim interpretation, where courts restrict the scope of later claims to what was explicitly disclosed in the provisional.

Common mistakes include:

  • Filing a sketchy summary instead of a detailed description.
  • Excluding potential embodiments or alternatives of the invention.
  • Relying on marketing materials rather than technical details.
  • Failing to use language broad enough to cover foreseeable variations.

Because of these risks, many attorneys recommend drafting provisionals with nearly the same care as non-provisional applications.

Claiming the Benefit of an Earlier Filing Date; Right of Priority

Whether a regular patent application can take advantage of a provisional filing date at the U.S. Patent Office is determined by law. Inventors sometimes file a provisional application with the intention of maintaining the original date when the regular application is submitted for examination. To take advantage of the earlier date, both provisional and regular applications must:

  • Have a common inventor
  • Some common disclosure
  • Overlap in time

Enablement and Written Description

Written descriptions and enablement must be met in all patent applications, especially adhering to the first paragraph of Section 112 of patent law. Enablement is met when patent specifics contain complete and clear instructions that anyone skilled in the area could use to make the invention.

The written description must compare how the claims describe the invention to the distinguishing parts of the final product. If inventors have a working prototype and have described it in figures, drawings, words, and formulas so a person of skill can verify that the invention was assembled correctly, the law is satisfied.

Best Practices for Drafting Provisional Claims

Even though claims are optional, thoughtful provisional claims can guide the drafting process and ensure the written description covers the invention’s essential features. Best practices include:

  • Start broad, then narrow: Begin with broad statements of the invention’s function, then provide narrower descriptions of embodiments.
  • Include multiple variations: Describe different configurations, materials, or methods to avoid unintentional limitations.
  • Mirror future claims: Draft provisional claims with an eye toward how they may later appear in the non-provisional filing.
  • Use drawings strategically: Diagrams and flowcharts can illustrate variations and support broader interpretation.

Following these practices helps ensure that future non-provisional claims can successfully claim priority to the provisional.

The Patent Office's Position

Rules regarding patent examination processes and patentability are published by the U.S. Patent Office in the Manual of Patent Examination Procedure (MPEP). When a provisional application cannot meet the written description requirements, priority will be denied. Patent specifics must adequately describe the invention in a detailed manner.

Licensing Considerations

Companies researching potential licensing will look into the history of the patent and data in the earlier applications. Attorneys for possible licensing partners search the following:

  • Filing dates
  • Data
  • Claims
  • Provisional filing integrity

Researching these factors ahead of time makes a beneficial business deal more likely.

International Impact

While provisional applications are relevant under different laws, then enablement and written description requirements transfer to almost all areas. Under European Patent laws, claiming priority to a provisional application filed in the U.S. is suggested in concerning priority under Rule 53(2) (See EPC Guidelines, A-III: 6.7). Pertinent disclosure requirements for provisional applications are found in Article 87(1) of the EPC.

Strategic Use of Provisional Applications

A provisional filing can serve as more than a placeholder—it can be a powerful strategic tool when used properly. For startups and inventors, provisional filings can:

  • Secure “patent pending” status quickly, which may attract investors.
  • Allow 12 months of development or fundraising before committing to the higher cost of a non-provisional filing.
  • Preserve flexibility to refine the invention while still locking in the filing date.
  • Support foreign patent priority claims under the Paris Convention if properly drafted.

However, inventors should avoid the misconception that a provisional guarantees protection. Without sufficient detail, later claims may fail to benefit from the original filing date, undermining its strategic value.

Patent Claim Drafting

Initial claims should do the following:

  • Define the product in broad terms.
  • Define the product in specific terms with all options.
  • Describe how parts are structured.
  • Describe how parts connect.
  • Describe how parts interact.
  • Explain how the invention is unique.
  • Explain how the invention is different from prior art.

The claims should clearly describe all aspects of the invention so that a person of skill could create and operate it.

Notable Provisional Cases

Some notable cases in provisional patent law for reference include:

  • New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co
  • LizardTech, Inc. v. Earth Resource Mapping, Inc.
  • MPHJ Tech v. Ricoh
  • Warner-Jenkinson Co. v. Hilton Davis Chemical Co.
  • Philips v. AWH Corp.

Frequently Asked Questions

1. Are claims required in a provisional patent application?

No. The USPTO does not require claims in provisional applications, but including them can help clarify disclosure and strengthen future rights.

2. What happens if my provisional application is too vague?

If the disclosure is insufficient, later non-provisional claims may be denied the benefit of the original filing date, weakening patent protection.

3. Can I file multiple provisional applications for one invention?

Yes. Inventors often file multiple provisionals as improvements develop, then combine them into a single non-provisional application.

4. How long does a provisional patent last?

A provisional lasts 12 months from the filing date. To maintain protection, a non-provisional application must be filed before expiration.

5. Do provisional applications protect my invention internationally?

Yes, if drafted properly, U.S. provisionals can support foreign filings under the Paris Convention, provided they meet enablement and disclosure standards.

If you need help completing a provisional patent application, post your legal need on UpCounsel. Our highly skilled team of over 5,000 lawyers have an average of 14 years' experience. We have served over 10,000 businesses including Airbnb and Airbnb.