Top 10 Reasons To File A Provisional Patent Application

Scott ThorntonInventor Help, Patent Law, Patent Office

As a patent attorney, I enjoy talking to inventors.  I love helping inventors and entrepreneurs secure intellectual property rights in their respective works.   A good part of my business involves building new relationships with people interested in the patent process.  Trying to explain the entire patent process over the phone, or in an initial consultation, can be pretty difficult though. Thus, I post pointers on this blog from time to time.

As an independent inventor, you want to maximize the quality of time spent working with your patent attorney.  The last thing you want or need is your attorney billing you for information you could have easily obtained through an internet search.  More importantly, you want your patent attorney to take you seriously when discussing your invention.  Knowing a few things about provisional patent applications before speaking with your patent practitioner can save you a lot of time and can streamline the process of moving from an idea to a patent application.

I wrote this top ten list for inventors and entrepreneurs because getting an invention “patent pending” is a lot easier than they often believe.  My hope is that these ten reasons to consider filing a provisional patent application encourage you to take a chance on the invention and patent process. More importantly, though, you will be better prepared to discuss with your patent practitioner whether a provisional patent application is the right path for you to choose.  Patenting an invention can be a long, expensive and frustrating process.  But being prepared for many of the common pitfalls along the way can make the process of obtaining a patent a smoother and less burdensome experience.

1. A Provisional Patent Application Gets Your Invention “Patent Pending”

Technically speaking, all it takes to be “patent pending” is for a patent application to be on file with the United States Patent and Trademark Office (or any other patent office in the world for that matter).  You can put your competitors on notice that your invention is indeed “patent pending” by filing a provisional patent application.

2. It Costs Less To File A Provisional Patent Application

The USPTO filing fee for a provisional patent application is only $70 if you qualify as a micro entity under USPTO rules.   This reduced rate can give you, the independent inventor or entrepreneur, a major break when every penny counts.

3. Provisional Patent Applications Have Fewer Technical Requirements

One of the best advantages in filing a provisional patent application first is that the technical requirements are less than that of non-provisional patent applications.  For example, you can provide pictures or rough sketches in lieu of professionally prepared CAD drawings.  In addition, a provisional application does not require patent claims when filed.  Put simply, provisional patent applications are easier to prepare and file than non-provisional patent applications.

4. A Provisional Patent Application Establishes an Official Filing Date

The United States went from a “First-to-Invent” system to a “First-to-File” system in 2013. This means that in most circumstances, the inventor who files a patent application with the USPTO first will ultimately be awarded the patent.  Thus, it is imperative that you get something on file with the USPTO before your competitors do it first.

5. A Provisional Patent Application Gives You A Year To Test the Market

You can take advantage of the provisional application’s one-year period of coverage to evaluate the commercial potential of your invention before committing to filing a non-provisional patent application.  If you determine that your invention has potential, you can then commit to filing a non-provisional application inside that one-year window.

6. A Provisional Patent Application Can Provide An Extra Year of Protection

A United States patent lasts for 20 years, measured from the effective filing date of the application. By first filing a Provisional Application, which is valid for one year, you can effectively receive 21 years of protection depending on whether you choose to claim priority to the earlier filed application.

7. Provisional Patent Applications Are Kept Confidential

Provisional patent applications are kept confidential by the United States Patent and Trademark Office.  Filing a provisional patent application does not compromise the confidentiality of your application since provisional paten applications are not published.

8. Provisional Patent Applications Are Not Examined By The USPTO

Provisional patent applications are not reviewed by USPTO examiners.  In fact, a provisional application is only cross-referenced when you decide to file a corresponding non-provisional application.  This offers you more latitude in perfecting a non-provisional application when you ultimately decide to pursue one.

9. It Costs Less To Prepare A Provisional Patent Application

A patent agent or patent attorney can prepare and file a provisional patent application at a lower rate than a non-provisional patent application because the process generally takes less time.  Furthermore, many firms offer client discounts for the preparation and filing of non-provisional applications because they are already familiar with both the client and the technology.

10. More Than One Provisional Patent Application May Be Filed

As you develop your invention, you may discover a new feature or new property associated with your invention.  In such an instance, you can file another provisional patent application to cover that new discovery.  If you have filed more than one provisional application, you may have the option of selecting the filing date to which you’d like to claim priority when you ultimately file a non-provisional application.