Written by: Larry Drasner

Partner

Congratulations! You’ve developed the next great invention, and you know patent protection is the way to go to protect your idea. You need to act promptly, as the first to file is recognized as the one entitled to the patent, and the filing date will be the date against which prior art is identified. On the way to the Patent Office, however, uncertainty sets in – am I truly the first to invent, can the invention be commercially successful, do I have (or can I obtain) the resources to bring this to market, is my invention market-ready or will I need design updates? Fortunately, the patent system provides a convenient mechanism to balance the need to initiate the patent process promptly versus the uncertainties as to the success of going forward – the provisional patent application. In this three-part series, we’ll explore some of the benefits and issues associated with using a provisional application as the first step in the patent process.

Let’s begin by considering what is a provisional patent application and how it differs from a more formal or non-provisional patent application. Generally, a provisional application is a type of patent application that permits the inventor to obtain a filing date without having to meet the various formalities of a non-provisional application. Because the provisional application lacks such formalities, the Patent Office will not examine the application. Accordingly, the provisional application acts as a placeholder, establishing that important filing date without having to move forward through the patent system. You will then have one year to convert the provisional application into the more formal, non-provisional application which is then examined by the Patent Office to determine if your invention meets the requirements for patentability.

There are three principal reasons to file a provisional patent application. First is establishing a filing date. Despite no examination by the Patent Office, the provisional application qualifies as a first filing and therefore establishes that important filing date.

Second is cost. Provisional patent applications can be substantially less expensive than non-provisional applications. Because the provisional application does not need to satisfy all the formal requirements, provisional applications typically cost less to prepare. Formal patent claims, drawings, specific application sections, and the like are not required – indeed, it is permissible to take your invention records and development documents essentially as is and simply submit such materials to the Patent Office as the provisional application. Supporting documents commonly filed with non-provisional applications, such as for example an inventor oath or an Information Disclosure Statement citing known prior art, also are not required. Government fees are less – $300 for a provisional application versus $1820 for a non-provisional application (at the large entity rate).

Third is time. You have one year from the filing date of the provisional application to convert the application to a non-provisional application. And again, during that one year the Patent Office will not examine the application, so you can decide whether proceeding further is viable. During that year, you may explore the prior art to verify you are the first inventor, explore commercial viability, and consider potential design changes which can be added to the application as part of the conversion, while still having established that important filing date.

As you can see, there are benefits to initiating the patent process with a provisional patent application. In upcoming posts, we will consider different types of provisional applications, and issues associated with conversion. Contact us to learn more on how we can help you protect your big ideas.