What is a U.S. Provisional Patent?

A U.S. provisional patent must be properly written and filed for in order to be effective. Moreover, anyone challenging a patent later on can point to a poorly done provisional patent application as evidence that there wasn’t an actual invention at the time that the provisional patent was filed for or that the invention claimed had not actually ripened past the idea stage at that time.

There are those that will actively prey on unsophisticated inventors by attacking the validity of provisional patents. It is therefore critically important to understand what provisional patents require and to apply for them properly.

But inventors should be wary of provisional patent courses found on the Internet. Inventors should rely on information from qualified sources. Inventors should rely on patent professionals to help them draft and file for their provisional patent, which means patent attorneys or patent agents.

Drawings in a Provisional Patent Application

Drawings are a necessary part of a provisional patent application. It is true that provisional patent applications don’t have as many formal requirements, but the disclosure must still be complete. In fact, in order to establish a priority date, the disclosure on a provisional patent application should be just as complete as it would be in a non-provisional one.

For many – perhaps most – inventions, drawings are a necessary part of this disclosure. This is because 35 U.S.C. 113 states that drawings are always required if they are necessary to understand the invention. Nearly all inventions require drawings to be fully understood. Notable exceptions are chemical compounds that can be fully explained by their chemical formula, and method patents that do not need drawings according to MPEP 601.01(f). However, although a method patent does not require a drawing, adding one can still be a good idea for these types of provisional patents.

A Complete Description

It isn’t easy to draft a provisional patent application. To do so, inventors need to get good advice from a qualified patent attorney or patent agent. Put simply, non-attorneys and non-patent agents are much more likely to make mistakes when it comes to the law.

When someone unqualified gives bad advice or improperly drafts a provisional patent, inventors suffer the consequences. It doesn’t matter whether there was malicious intent or just an innocent lack of understanding. Inventors need to be careful about who they entrust to handle their provisional patent to ensure that the description of the invention satisfies the disclosure requirements of 35 U.S.C. and the application is properly done.

Historically, one problem with provisional patent applications has been the fact that the Patent Office doesn’t examine them. All that is required at this stage is a correctly filled out provisional patent coversheet. When an inventor attaches a correctly filled out coversheet to their provisional patent application they will automatically receive an official filing receipt from the Patent Office. In other words, there are no immediate consequences when a provisional patent application is poorly done that would forewarn an inventor of problems to come. When a provisional patent is incomplete, the patent right itself could be compromised later on.

Why Do You Need a Provisional Patent?

The United States Patent and Trademark Office (USPTO) has offered provisional patents to inventors since June 8, 1995. Provisional patent applications cannot themselves form the basis of a permanent patent, but when they are done properly a provisional patent is still extremely useful. The United States is a “first to file” country and therefore provisional patents are crucial tools to establish the date that an inventor is filing for patent protection. A provisional patent application establishes an early effective filing date for a later filed non-provisional patent.

A patent term runs from 20 years of the earliest filing date of the non-provisional utility application. If a United States inventor wants to file overseas, they must first obtain a foreign filing license, which is most easily done by filing a patent application in the U.S.

As soon as an inventor files a non-provisional utility patent application, the 20-year patent term begins.  When foreign patents are applied for, that would lock in priority but would not start the patent term clock running in the U.S.  Provisional patents lock in priority dates, but like foreign applications do not start the patent term.

Thus, the primary purpose of a provisional patent is to gain the benefit of an earlier priority filing date.  Provisional patents can be applied for without a formal patent claim, oath, or declaration. Provisional patents are also lower-cost than non-provisional patent applications in terms of filing fees. Filing fees for a small entity are $140 for a provisional patent application, compared to $730 for a non-provisional patent application. See the USPTO Fee Schedule for more information.

The purpose of provisional patent applications is to describe the invention as completely as possible. Many of the formal requirements of non-provisional patent applications do not need to be satisfied.

Provisional patents last for 12 months, and allow the inventor to use the term “Patent Pending” during that time. The 12-month pendency period can be extended in certain circumstances for a hefty fee (currently around $1,700). To take advantage of the earlier effective filing date of the provisional patent, a non-provisional patent application must be filed within 12 months.

Because of the United States’ “first to file” law, inventors should file as soon as the concept for the invention is complete. But this doesn’t mean that inventors cannot continue to work on improving the invention thereafter. As long as new and improved versions are substantially similar to the original idea, the provisional patent will still apply to them.

Therefore, even if you are going to continue working on the invention, a provisional patent application is a great idea. If an invention is altered substantially, you may want to file another provisional patent application to reflect the changes. You can file multiple provisional patent applications within 12 months of the filing the first provisional application.

By filing multiple provisional patent applications, you get priority for your changed or new invention as soon as it happens.

Ultimately, it is almost always a good idea to file a non-provisional utility patent application as soon as possible. Provisional patents are a crucial step in the process.

Filling Application Online Patent

Here are the steps for filing provisional patent according to the USPTO website:

  1. Go to uspto.gov.
  2. Click on the "Patents file online" link.
  3. Click on the "Unregistered filer” link.
  4. Fill in your name and your email address. NOTE: If you are not the main inventor, you will put your name here and then need to give the main inventor’s name on the next page.
  5. On the next page, fill in your application data, including the name of your invention, the first named inventor, and your mailing address.
  6. Next, you should attach the three pdf files that you have saved and choose the proper dropdown for the Document Description section. Click the "Upload & Validate" button when you are done.
  7. After you press the "Upload & Validate" button, you should see the next screen showing that all your files have "No Errors" which is shown as a blue diamond symbol. Correct any errors you have and then press the "Continue" button.
  8. On the next screen, you will calculate your payment to the USPTO. Click the "small entity" link if you are an individual inventor, a small company of less than 500 employees, or a non-profit. Check the "Provisional" box and fill out the information requested. Press “Continue.”
  9. On the next page, make sure all your information is correct and hit “Submit.
  10. Pay the filing fee. Print out and keep copies of your receipt. You will also get an official filing receipt from the Patent Office in the mail in 3-5 weeks. You can use the term "patent pending" as soon as you get your official receipt in the mail.

How to Prevent a Manufacturer From "Stealing" Your Invention

Inventors should never blindly trust manufacturers. Most will be fair and honest, but trust alone isn’t a sufficient protection. Have manufacturers sign binding non-disclosure agreement before seeing an invention.

How a PPA Differs from a Regular Patent Application

A PPA costs $65 for a micro-entity, $130 for a small entity and $260 for a large company, rather than the thousands or tens of thousands of dollars it takes to do patent searches and pay patent lawyers in preparation for a full patent application.

The hardest part of completing a non-provisional ("full") patent application is drafting the claim. Precise wording is essential.

Description of the Invention

The description can be written in plain language. Sometimes, technical terminology will be necessary. In any case, the description must be complete, clear, and concise. Your description must state the "best mode" for carrying out the invention.

At a minimum, a description should include:

  • Title
  • Purposes
  • Drawings
  • Steps of the invention
  • How components interact
  • The purpose or use of the invention
  • “Best mode” of the invention

Drawing(s) of the Invention

Drawings are almost always necessary. The USPTO strongly recommends the inclusion of illustrations for purposes of clarity. An Examining Attorney will compare the Provisional Application to the Non-Provisional Application to ensure that they are the same invention.

The USPTO suggests these six formats for illustrations:

  1. Viewpoints (e.g. top, side, disassembled, exploded, perspective)
  2. Labels (e.g. sheet, figure, reference)
  3. Schematics and/or flowcharts
  4. Dashed lines or straight lines
  5. Photos
  6. Other drawings

If you need help with a 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, Stripe, and Twilio.