06 Jul 2013

What is a provisional application?

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In the United States, the USPTO permits patent Applicants to submit an informal provisional application  which serves as a place holder application for a period of one year until the Applicant converts  or replaces the provisional application with a formally prepared and filed non-provisional utility patent application.

I generally advise clients not  to file provisional applications absent some unusual circumstances*** because provisionals tend to be wasteful in terms of limited resources and can sometimes complicate the process for securing patent rights, especially within certain international jurisdictions.

Nevertheless, a provisional application allows the patent application to claim “priority” back to the filing date of the provisional when submitting a formal patent application, and this claim of priority is good for all that is actually disclosed and described by the provisional application.

Thus, if you have figures and narratives describing your invention, but you are not yet ready to file the formal patent application, then a provisional may be a good mechanism by which to submit this information to the USPTO and then later benefit from the date of priority for the provisional document to the extent that you later claim the features and functionality in a formal patent application.

Some key points to keep in mind are:

  • A provisional application is substantially less expensive to prepare and file but typically will not conform to the requirements of a formal patent application and will generally lack the polish of a professionally prepared formal patent application;
  • A provisional application will never be examined and will never become an issued patent, instead, a formal patent application must be filed to replace it;
  • Patent Applicants have just one year within which to prepare and file the formal patent application and must claim priority to the provisional if they wish to benefit from the earlier filing date;
  • A provisional is never published, but if relied upon, it will become part of the public record and may be then be discovered and analyzed, potentially by parties adverse to your interests;
  • A provisional can establish the basis upon which you may legally state “patent pending” for your products related to the filing, but parties savvy with the patent system will understand that provisionals are of limited value;
  • If you cannot describe or document your invention then a provisional filing will be of very little value, and as such, a waste of your time and money. It may be worth waiting until you can provide some figures and narratives about how your idea works before seeking to file a provisional application; and
  • A provisional will permit you to explore the marketability of your invention and still benefit from the filing date of the provisional application if you decide to later file the formal patent application. This can be important if you are disclosing your idea publicly or to other third parties which may seek to undermine you by filing their own patent applications on the same or similar idea. Even if this happens, you can file a formal patent application and still have an earlier filing date than your adversaries, assuming that your concepts are properly disclosed and described by the provisional application.

All the very best,

Spencer K. Hunter

*** Unusual circumstances that inventors may encounter include, but are not limited to: (a) imminent public disclosure, sale, and/or offer for sale; (b) disclosure to third parties who may not hold your secrets in confidence or who may seek to outright destroy your potential patent rights by filing patent applications in their own name before you are able to file; (c) participation in conventions, standards meetings, trade shows, etc.; and (d) an inventor’s own uncertainty as to whether a formal patent application should be filed at all.

Spencer specializes in Patent and Intellectual Property Law in Beaverton, Oregon and surrounding areas including Portland, Oregon.