Key Takeaways

  • Provisional Patent Basics: A provisional patent application offers a lower-cost way to secure a filing date and establish "first to file" status under U.S. patent law.
  • Not a Granted Patent: It does not get examined or lead directly to a granted patent; a non-provisional application must follow within 12 months.
  • Delays Formal Process: It delays the start of the 20-year patent term, effectively giving you up to one extra year of protection.
  • Less Formal Requirements: No claims, oath, or prior art disclosure required; however, the written description and drawings (if needed) must fully describe the invention.
  • File Quality Matters: Poorly prepared provisional applications may cause loss of filing date if the non-provisional version is too different.
  • Components: Includes a cover sheet, written description, optional drawings, and a filing fee.
  • Benefits: Offers confidentiality, early protection, and the ability to label your invention “Patent Pending” at a lower upfront cost.
  • Legal Help Recommended: Due to strict requirements, it's wise to consult a patent attorney for proper drafting and filing.

Provisional Patent Application: What is it?

A provisional patent application is a type of patent application filed with the US Patent and Trademark Office. Under US patent laws that went into effect in 2013, an applicant who is the first to file a patent application for a new invention has an effective filing date over those who file later. The provisional application is a lower cost application that allows you to gain first to file status quickly.

However, a provisional patent application does not become a granted patent and is not examined on its merits. Formal examination that leads to patent grant is delayed during the provisional application period. It is a sort of holding place, for up to one year, to document your invention date and gain first to file status. To obtain a patent on the invention, you must file a non-provisional patent application.

A non-provisional patent application is a highly detailed application that will be examined by a USPTO patent examiner and can become a granted patent. A granted patent can fully protect your invention and be enforced against others. You can also claim the benefit of your provisional filing date in your non-provisional application, if it’s filed within 12 months after your provisional filing.

You may file a non-provisional application initially. However, a provisional application affords you time to complete the detailed and more expensive non-provisional application and develop your invention into a market ready asset. In addition, the 20 year patent term does not start to elapse during the provisional pendency time. Therefore, you effectively get an extra year of patent protection.

Compared to its related non-provisional application, a provisional application can be filed with an abbreviated disclosure. Formal patent claims, an oath or declaration, and an information disclosure statement of prior art are not required. Drawings are not required unless they are necessary to understand your invention. Curiously, they usually are necessary. If you have any question about whether drawings are necessary to understand your invention, then include them.  

Keep in mind that a provisional filing must meet US patentability requirements. It must also include enough details to be a complete template for the non-provisional filing. If an examiner decides that your non-provisional filing is too different, then you will lose the benefit of your provisional filing date for any new subject matter. The examiner may believe that the differences show that you were not in “possession” of your invention. The scope of your provisional disclosure must fully support your non-provisional application to avoid such new matter rejections. That includes text and drawings.

When you evaluate which type of application to file, consider how long it will take to develop your invention into a product and its viable market life. For example, a long development time or a long market life often favor filing a provisional application. In part, that’s because your 20 year patent term clock does not start ticking away during the time that the provisional application is pending.

The level of innovation in your field of interest, urgency to obtain a granted patent, and investor demands, are examples of factors that may complicate your filing decisions. Each situation is unique. An experienced patent attorney will help you make an optimum choice between filing a provisional or non-provisional patent application.

Elements of a Provisional Patent Application

A well-prepared provisional patent application is critical to preserving your filing date. Counsel by a patent attorney is strongly recommended. A provisional application includes a cover sheet, written description and fee. The USPTO has standardized many of the forms required for the application.

Cover Sheet. The coversheet must identify specific information including:

  • The application is a provisional patent application
  • The name(s) of all inventors
  • The inventor(s) residence(s)
  • Title of the invention
  • The name and registration number of attorney or agent and docket number (if applicable)
  • Any correspondence addresses
  • Any U.S. Government agency that has a property interest in the application.

Written Description of the Invention. The description should be clear and concise. You must use exact terms that enable someone, who has skill in your field, to make and use your invention. The goal is to demonstrate that it is new, complete, and meets US patent requirements. It should include:

  • The title and purpose of the invention
  • Components or steps of the invention
  • How the components work or the steps completed
  • How a user operates the invention
  • Advantages of the invention
  • Description of any included drawings

Drawings. While not required, if you think drawings could be necessary to understand your invention, then include them in the provisional filing. Don’t risk a new matter rejection and loss of filing date by skimping on drafting costs. Drawings must be technical, detailed, and clarify the description. Information you provide within the drawings will strengthen your application.

Fees. The application must be accompanied by a fee. USPTO fees are adjusted annually and you can find the current fees on the government website.

Benefits of the Provisional Patent

Although patent examination will not start unless you file a non-provisional patent application within 12 months, a provisional patent application offers many benefits.

  1. Documentation of your interest in the invention
  2. Lower cost than a non-provisional patent
  3. Established official USPTO effective filing date
  4. Allowed use of the “Patent Pending” designation
  5. Patent confidentiality
  6. Immediate acceptance of application

Frequently Asked Questions

  1. What is a provisional patent application?
    It’s a lower-cost, temporary filing that secures your invention’s filing date for 12 months.
  2. How long does a provisional patent last?
    Exactly 12 months. You must file a non-provisional within this period.
  3. What are the main benefits?
    Early priority date, lower upfront cost, “Patent Pending” status, and extra development time.
  4. Is it enforceable like a regular patent?
    No. Only a granted non-provisional patent gives you enforceable rights.
  5. Are drawings required?
    Not always, but if needed to understand your invention, they must be included.
  6. Can I change my invention after filing?
    Yes, but new material not in the original provisional may lose the earlier date.
  7. What must be included in the filing?
    A cover sheet, detailed written description, optional drawings, and fee.
  8. Can I skip the provisional and file a full patent?
    Yes, you can file a non-provisional application directly if you're fully prepared.
  9. When is a provisional patent a good idea?
    When you're still developing your invention but want to secure early protection.
  10. Should I use a patent attorney?
    Yes. An attorney ensures your application meets legal requirements and supports future filings.

Remember, an experienced patent attorney will be able to craft a well prepared patent application that meets patent requirements, provides an effective filing date on first try, and best fits your business needs.

If you need help with a game patent application, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.