How do I file Provisional Patent?

Provisional patent applications definitely have their place in the patenting process. However, they typically are reserved for emergency situations when a disclosure is imminent and something needs to get on file to preserve rights to the invention. If you have the time, and the financial resources, it is always better to do a non-provisional filing. The problem with a provisional application is that when it comes time to convert it into a non-provisional, you can only claim that which is disclosed in the provisional?s specification. So to the IP attorneys point, a good provisional has a specification which should not be that different than a non-provisional. Where I think the IP attorney consulted is incorrect is that a provisional is typically less expensive if for no other reason there are no claims needed to be created which is the true art of patent application drafting. We agree with the advice already received that provisional applications should be of used sparingly, but financial realities and timing can make them the best choice at times.

As there are no formatting requirements for a provisional patent application and claims are not required, it is possible to file a provisional patent application, *pro se*. Because there are no formatting requirements, or prior art search or claims required, a provisional patent application can and should be much less expensive than a non-provisional or utility patent application. It is a relatively simple matter to file a provisional patent application online with the Patent Office. But, it requires some knowledge of the right forms and use of the Patent Office Electronic Filing System and a credit card for payment of a filing fee. However, the provisional patent application is only as good as what it discloses. Ideally, it must disclose enough written description that it enables one of skill in the art to practice the invention claimed in your subsequent non-provisional patent application. Furthermore, the provisional application specification and drawings should provide written support for the claims you intend to assert in the subsequent non-provisional patent application. So, to the extent that the provisional application is lacking in this written support, you run the risk of losing the priority date of your provisional application to intervening prior art that predates your non-provisional application filing date. For these reasons alone, you are best advised to have a patent attorney prepare and file your provisional patent application. Though a *pro se* applicant may successfully file a provisional patent application, such an applicant should not attempt to file non-provisional patent application. This is because the Patent Office rules and requirements are very technical in nature, constantly evolving and thus, not readily apparent to the *pro se* applicant. Additionally, there are many patent application drafting strategies that rely on a solid knowledge of the case law relating to patents that have been litigated in order to avoid pitfalls and maximize allowable claim scope.

I currently charge around $1,000 to $1200 for the preparation and filing of a provisional including the $125 filing fee. There are pros and cons to submitting a provisional. I would say that if you need a year to get together the money to file a utility application, then file a provisional now. A utility generally runs at a min about 4 times the cost of a provisional. Yes you can do it yourself - much in the same way you can take out your own appendix. Possible but not recommended.

You can file anything with the government and call it a provisional patent application and people do all the time. Sometimes it works out for them and sometimes it does not. Some attorneys don't do a good job of preparing and filing patent applications, provisional or otherwise, and non-attorneys only rarely do it right. If you plan on doing it yourself, you will make mistakes and probably serious ones. If you are set on doing that, you should at least go buy a book on how to write an application. I believe NOLO Press has a decent one. The patent process is long, complicated and expensive and anything that happens in the process has a chance of impacting the overall value of the patent or the chance that it will even be allowed. If your technology is something that you really believe in, you should find the support for it so you can do it right. You don't want to end up betting the future of a very profitable company on a patent that you wrote yourself.

It is not overly difficult to file a provisional patent application by yourself if you are familiar with the process because the USPTO does not require specifics about the invention. It essentially holds your place in live by providing minimal protection for your product while you finish developing it. However, you have only one year after the provisional filing to submit a formal patent application with complete details. If you fail to submit the formal application at that time, all protection for your product ceases. It sounds like your attorney is trying to save you both time and money by recommending the formal application.

A provisional application CAN be a do it yourself project - BUT - it must comply with the patent laws - especially Section 112. That is why patent attorneys advise against DIY attempts - as most inventors cannot fully comply with the legal requirements. There are guides on the Internet for how to write a provisional patent application - so I suggest you read them.

A provisional patent application does not necessarily need to be done in the same way as a "formal" non-provisional application. Provisional applications are often used due to budget constraints.