Should You file a Provisional Patent Application?

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Provisional applications do not save inventors money, but they can be used to avoid upfront costs. In addition, provisional applications can be used to meet otherwise unmeetable deadlines, to extend the expiration date of a patent, and to instantly file on incremental changes to an invention before filing a full patent application.

What is a Provisional Patent Application?

A provisional application is a form of patent application that can be used before the filing of a full utility application. The Provisional Patent section in Bitlaw provides a detailed description of the history and requirements for a provisional patent application in the United States. In a nutshell, a provisional application is a temporary placeholder application that allows an inventor to establish the filing date of their invention with the US Patent and Trademark Office (the "USPTO"). A provisional application is never examined by the patent office. Rather, it serves only this placeholder purpose, and must be followed by a later filed utility (or "non-provisional") application.

Provisional applications are useful because a later-filed application can claim "priority" to a provisional application, thereby claiming the filing date of the provisional application as its own filing date. If a provisional application is filed on January 1st, and a non-provisional application on the same invention is filed on December 1st of the same year, the non-provisional application can claim priority to the provisional and be treated as if it were filed on January 1st. Early filing dates are important because the United States is a first-to-file country (see our guidance on First to File Explained for more info). In order to make this claim of priority and take advantage of a provisional patent application, the non-provisional must be filed within one year of the provisional application. In addition, the provisional application must fully describe the invention being claimed in the later-filed non-provisional application (see Bitlaw's legal discussion on Concerns about filing provisional applications for more information).

The existence of the provisional application within the U.S. patent system provides an extremely useful tool for protecting inventions, but it is a bit confusing for most inventors. The following section lists some of the most important points you should know about provisional patent applications.

Does a provisional patent application save me money?

Yes and no. All provisional patent applications go abandoned twelve months after they are filed, and are never examined by the patent office. As a result, the provisional patent application never becomes a patent by itself, and will always be useless if it is not followed by a non-provisional patent application within one year. Since the alternative to filing a provisional patent application is to directly file the non-provisional application, the provisional patent application is an additional step in the process and, in most cases, will increase the total cost of obtaining a patent.

However, filing a provisional application on your own is almost always cheaper than hiring a patent attorney to draft a non-provisional application for you. Therefore, if you cannot afford the $8,000 to $14,000 for filing a non-provisional application, you are much better off filing a provisional application for less than $200 than simply doing nothing. Although you will eventually have to file that non-provisional application, you can spend the year of the pendency of the provisional application developing and trying to sell your invention. If during that year it becomes clear that your invention is quite valuable, you can then hire the attorney knowing that the provisional application you filed may have given you some additional priority rights. If, however, during that year you realize that your invention is not workable, or that no one seems interested in your invention, you may decide that it is not worth the cost of filing the non-provisional application.

In addition, sometimes an inventor-drafted provisional application forms a good starting point for the non-provisional application. In effect, the effort the inventor takes in drafting the provisional application reduces the effort (and expense) required by the patent attorney to draft the non-provisional application. Please note that this is not always the case, as we have found that non-provisional applications are frequently re-written from scratch even if a provisional application was originally filed.

Why bother filing a provisional application if it never turns into a patent?

It turns out that there are many reasons:

  • Patent term extension: Assuming that a non-provisional patent application was filed at the end of the one-year deadline after the provisional application, the use of the provisional application will extend the term of any patent that issues by that one-year period. This is because U.S. law states that a patent expires twenty years from the date on which the first non-provisional patent application was filed. So, if the provisional application were filed in 2020, and the non-provisional application were filed in 2021, the patent will expire in the year 2041. If the non-provisional application were filed directly in 2020, the resulting patent will expire in the year 2040, one year earlier than if the provisional application is filed first.
  • Delaying Examination: Because provisional patent applications are never examined by the patent office, the process of starting with a provisional application and following it one year later with a non-provisional application will delay examination by the patent office for one year. This is because new patent applications are examined by the patent office in the order in which they are received within their assigned art unit. The application is not placed into the examination queue until the non-provisional is filed. In limited circumstances, this is a benefit, especially if an inventor has reasons to avoid examination and a potential negative office action as long as possible. In most cases, however, this is a disadvantage. A patent is not enforceable until it issues, and it cannot issue until examined. In effect, the one year gained in term extension at the end of the patent life is sacrificed by delaying issuance for one year. If the invention being patented is likely to be much more valuable in twenty years (such as a pharmaceutical drug might be), this is a good deal. In our experience, software inventions are not the same, in that they tend to be of highest value in the near future (before technology passes the invention by). In these cases, the delay in the examination may be too high of a price to pay for the purpose of adding on one year of patent term at the end.
  • Patent Pending Status: The provisional filing may be prepared and filed quickly so as to get a case on file sooner rather than later. Once a patent application is on file with the USPTO, the applicant is entitled to use the phrase “patent pending” on products or services covered by the application. This is true whether the patent filing was a provisional application or a non-provisional application. This ability to quickly and cheaply get "patent pending" status can be of great significance when attempting to attract interest in a startup endeavor, market a new product, or raise funds based on the perceived value of an IP portfolio (see our guidance on The Benefits of Patent Pending for more information).
  • Delay the Cost of a Non-Provisional Application: As indicated above, provisional applications and their filings can be quite inexpensive especially when compared to the cost of filing a non-provisional patent application (see our guidance on How much does a patent application cost?). While we like to tell inventors (only half-jokingly) that the best thing they can do is to spend lots of money up front with their patent attorney to file the best possible non-provisional application as soon as possible, we understand that this is not possible for all inventors. When it is not possible, it is always better for an inventor to draft up and file a non-provisional patent application on their invention as soon as possible than for the inventor to do nothing or to simply wait until funds are available to hire a patent attorney.
  • Time to Investigate Value of Invention: Unfortunately, the majority of inventions made by individual inventors are not profitable for the inventor. Either the invention is not new, or the expected market for the invention does not materialize. As patent attorneys, we do not want inventors to spend significant money with us on an invention with little value. The filing of a provisional application reduces upfront costs and gives inventors one year before the non-provisional application must be filed. This provides that inventor with time to determine whether the invention has value in the marketplace, either by trying to sell the inventive product or by trying to convince investors to invest in their enterprise. If during that year, the inventor realizes that the invention will have some value, they can come back to the patent attorney to have the non-provisional application drafted knowing that they are spending their money on an invention that appears to have value.
  • File and Combine Multiple Provisional Applications: As is explained below, the ability to file multiple provisional applications and combined them into a single utility application can secure greater protection during the development of a new invention.

In spite of these many reasons, most of our clients do not file a provisional application. Rather, when hired, we immediately begin work on the non-provisional application. This process is generally preferred because it i) reduces the cost of the process and ii) expedites examination in front of the patent office.

Can I prepare and file a provisional application without an attorney?

Yes. The good news is that provisional patent applications do not need to include claims, which are frequently the most complex and difficult part of a patent application. Furthermore, provisional patent applications are never examined by the patent office and are never published, so there are no significant concerns about proper formatting or organization of a provisional application. All that is required of a provisional application is a complete written description of the invention, sufficient drawings to help a reader understand the invention, a cover sheet that identifies the invention and inventors, and the payment of a filing fee of less than $200. The application may be filed online by uploading the application as a .pdf file using the USPTO’s online filing system.

Should I file a provisional application without an attorney?

It depends. While a provisional application need only be a very basic description of the invention, such a basic description may not adequately describe all of the various optional aspects or alternative embodiments of the invention. Part of a patent attorney’s job is to assist the inventors in finding the boundaries of their invention. The attorney will often assist an inventor in expounding upon or even realizing features of the invention that might have otherwise been excluded from the description if drafted solely by the inventor. In addition, most patent attorneys will have a draft of the patent claims in front of them (or at least in mind) before they begin a detailed draft of a patent application. This means that even though patent claims are not required in a provisional patent application, most patent attorneys will effectively set forth those claims anyway if they are drafting the provisional application for you.

On the other hand, applicants often choose to file a provisional application themselves because they cannot afford the cost of hiring an attorney to prepare the application for them. Legal services are expensive, and attorneys will often insist that the provisional application be written with the same level of detail and diligence as a utility filing, resulting in little or no cost savings if a patent attorney is asked to draft a provisional application from scratch. This desire to draft a provisional application to the same level required by that of a utility filing is not an exercise in cost-inflating redundancy, but rather the attorney’s need to ensure that the provisional application fully supports the invention that will eventually be claimed in the utility filing.

Will Forsgren Fisher McCalmont DeMarea Tysver draft a provisional patent application for me?

We will, but you probably don't want us to. If you have us draft a provisional application for you it will likely not be much cheaper than a non-provisional application (see How much does a Patent Application Cost?). As explained above, this is because we will want to draft the application as well as possible, which means identifying the invention to be claimed and fully describing that invention. You may ask that we do this and then file the application as a provisional (for instance, to extend the life of the issued patent--see the discussion of benefits above). However, in most cases, a fully drafted application will be filed directly as a non-provisional application and the provisional application will be skipped.

Will Forsgren Fisher McCalmont DeMarea Tysver edit my provisional patent application?

Yes, as long as you clearly limit the effort that we can spend on your application. We have agreed to spend a limited amount of time editing and providing feedback on provisional patent applications that were drafted by our client. We inform our clients that the end product is not equivalent to an application we drafted on our own, and therefore the resulting application likely be more vulnerable to not fully disclosing the eventually claimed application. In spite of these limitations, we recognize that a limited amount of input on a provisional application can improve the quality of the application without costing as much as a fully drafted application. In these cases, we usually request the ability to spend between $2,000 and $3,000 of our time to come up to speed on your invention, review your draft, make changes, and to suggest additional content to be added.

Would I ever want to just file a provisional application and not a utility?

Generally, no. It has occurred that folks will file a provisional application to then “shop around” their invention in the hopes of attracting purchase or financial backing for further development, and yet have no intention of filing a utility application should that backing or support fail to materialize. Nonetheless, as a general rule, you should assume that if your invention has value, you will need to file a utility application within one year of filing the provisional application in order to have a chance at gaining patent protection for the idea.

Should I file more than one provisional patent application?

Multiple provisional
				patent applications can be filed over time and combined into a single non-provisional patent application

In some circumstances, yes. Provisional applications can be particularly useful when the inventive work on a product is not yet finished. In this case, multiple provisional applications can be filed each time a new milestone is reached or each time a new inventive element is developed. As shown in the above illustration, as long as these different provisional applications are all filed within one year, a single non-provisional patent application can be filed within that one-year timespan and claim the benefit to all of the provisional applications. In this way, each inventive element is protected as soon as it is developed, but the cost of the non-provisional application is delayed until all the inventive work is completed (or at least until the one-year deadline is reached). Without the use of provisional applications, an inventor would have to choose between paying for multiple, non-provisional applications (which can add up quickly), or delaying a patent filing on each iterative improvement (which opens the opportunity for competitors to file on the same invention during that delay period).

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This guidance is provided by the attorneys of Forsgren Fisher McCalmont DeMarea Tysver. Please contact us if you need help protecting your intellectual property. The legal information provided in this guidance should be distinguished from actual legal advice. Please see the Guidance index page for more information.