Provisional Patents | What You Need To Know About Provisional Patents

Provisional Patents: What You Need To Know


Provisional patent applications are a topic that I touch on with clients on frequent basis.

Even lately, it seems that many inventors are not aware of the flexible tool provisional patent applications can be.


Smaller Initial Investment

The cost to file a provisional patent application can vary widely. Some entities provide a simple filing service for very little; the inventor simply submits a description, pays the government filing fee, and the provisional is filed and complete.


Relaxed Requirements

A provisional patent application may be as simple as a few hand sketches and rough notes. Alternatively, a more expensive complete or formal provisional application may be worth the additional upfront cost.

In some cases, a more formal provisional may help to speed up the preparation and filing of a full non-provisional utility patent application down the road. It may also provide a better base to support the early filing data of the provisional application once the non-provisional becomes the subject of examination or litigation.

This may be beneficial if business goals and time frames change during the development process or if the technology is one that advances quickly. In general, the provisional is a good way to get things started and test the waters of your market without having to make a huge initial investment.


Get a Filing Date

One of the most critical parts of a patent is the filing date.

The filing date determines when your patent protection begins. Filing a provisional is a good way to get that date set. As soon as a provisional is filed, the United States Patent and Trademark Office provides a receipt with a filing date.

The provisional application will hold that date for you for up to one year. During the course of that year, a non-provisional patent application may be filed which takes over that initial filing date.

The full patent, after issuing, is then considered to be in force from that initial filing date of the day the provisional was filed.


Time to Develop the Invention

As mentioned above, the provisional will last for one year. During that year, inventors can place "Patent Pending" on their inventions, marketing, packaging, etc.

Additionally, it allows for some time to look into potential markets, work with potential investors and funding, work out manufacturing, get test input on the invention, build an image and campaign, put together a team, investigate licensing opportunities, etc.

While a year may seem like a long time, it goes all too quickly for almost every inventor I've known.

Don't waste this time.


Make the Call

Because the provisional affords inventors that one-year time period, it allows for investigation prior to making the investment on a full non-provisional patent application.

It may be that the information gathered during the course of the year indicates that moving forward may not be the best option.

At that point, the expense of the full non-provisional may be avoided. It may be that changes are necessary to take advantage of market opportunities or to improve the invention.

That is where incremental filings may be useful.


Incremental Filings

As an invention is developed, it may change.

Those changes may be within or outside of the scope of the original description in the first provisional.

One option to provide protection for those changes is to file incremental provisional patent applications.

Once a product is ready for full patent protection, a full non-provisional patent may be filed which takes in all of the previously filed provisional patents (within one year before the filing of the full non-provisional).

The different changes included in each of the provisionals would carry the date of the respective provisional filing but may be rolled into a single non-provisional patent application.

This can help to keep costs down as an invention goes through the initial development process while still providing the opportunity to protect those new developments.


Frequently Asked Questions

Can my provisional patent get rejected by the USPTO?

- No. Your provisional patent application will not be formally examined. It will be filed and get you the filing date and I’ve never seen one rejected.


Can I sue someone with my provisional patent?

- No. The provisional patent application is not a true patent and is not legally enforceable. It is simply a placeholder for you to use when filing your full non-provisional patent application. If you do get your full non-provisional patent issued, you may take legal action against anyone who infringed even if they did so only during the period of your provisional before your full non-provisional was filed.


Do I need to have a Non-Disclosure Agreement (NDA) when I talk to people if I've filed a provisional patent?

- No, but it's probably a good idea. Provisionals and NDAs have great synergy. In many instances, it may communicate that you are serious about your invention and feel it has value. This can be useful in talks and negotiations with potential investors, manufacturers, distributors, licensors, etc. It can also prevent issues involved with disclosure of your invention to others or offering it for sale as contract law can provide immediate protection while you work on getting your patent issued.


Provisional patent applications are a great tool. If you have additional questions, please contact your attorney.


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