What is a provisional patent application and is it important?

The US provisional patent application is a document with a one (1) year lifetime, which allows an applicant to secure a first filing date before any public disclosure of the invention described in the application, if (1) the application is filed before any such public disclosure, and more importantly, if (2) the provisional application meets the requirements of the patent laws, by providing sufficient information regarding how to make and how to use the invention. A provisional application is NOT a patent, but filing it does allow you to state that your invention is "patent pending." Applicants use provisional applications so they can "test the market" for their invention for the one year lifetime. If the market looks favorable, a formal utility application can be prepared and filed from the provisional." The key difference between the applications is the formal application requires "claims" while the provisional does not. Claims provide the legal definition of the invention and they must be new and not obvious over what was done before - the "prior art."

You can apply for a provisional patent when you have the basic design established for your invention but still need to tweak a few things. The provisional patent application does not require as much detail as the actual patent application that you will submit when your idea is complete. And it is not published on the U.S. Patent and Trademark web site, so your idea remains confidential. The PP application is only good for up to a year and then you must submit the full patent application.

A provisional patent application provides a quick and potentially inexpensive way to establish a priority date for patent rights and you are patent pending. The intended purpose of a provisional patent application is to quickly establish a priority date for your invention. This is because we have a first-to-file patent system in the United States and in most countries internationally. The provisional patent application has advantages and disadvantages. Some of the advantages have already been mentioned. It is a quick and inexpensive way to become patent pending. This is because there are no formatting requirements for a provisional patent application, claims are not required, government filing fees are lower than for utility applications and your legal fees to a patent attorney should be less as well. Hence it is possible to file any sort of enabling disclosure of the invention as your provisional patent application without any further drafting or composition by a patent attorney or agent. Another advantage is that the "up to one year" life of a provisional patent application does not count toward a patent's term. So, in essence, you can have up to 21 years of protection if a nonprovisional or utility or international patent application is filed within that one year window of provisional patent application life. A provisional patent application is never published. So, if you change your mind about disclosing your invention before you perfect your rights by filing the nonprovisional, utility or international patent application, there is no public disclosure of your invention from having filed the provisional patent application. Finally, from a business perspective, the up to one year life of a provisional patent application gives the inventor/applicant up to a year to determine the commercial value of the invention prior to investing in a utility or international patent application which is considerably more expensive than what the provisional application costs. If there is no reasonable return on investment for the invention, one need not follow through with the substantial investment in a utility and/or international patent application because it is a waste of resources. Provisional patent applications also have some shortcomings. For example, it automatically expires within one year of its filing date. It is never reviewed on the merits by a patent examiner. Consequently, if no further patent applications are filed claiming priority to the provisional patent application, nothing will become of the provisional patent application. Stated another way, you will never obtain patent rights from a provisional patent application alone. Furthermore, because there are no formatting requirements and because provisional patent application are often hastily filed, the written support for later filed claims (utility or international application) may be weak or nonexistent, potentially rendering the priority date of your provisional application worthless. So, one must take care to file as comprehensive a provisional application as possible. Finally, a provisional patent application can add to the overall delay in, and cost to, obtaining patent rights if from the outset you know you want enforceable patent rights, namely an issued US patent (utility, design, plant, etc.) Average pendency for a US utility patent application is about 3 years, unless you qualify or pay for expedited processing. You don't have to file a provisional application first. You can go directly to utility or international patent application. As always, you are well-advised to seek patent counsel to discuss your particular invention and facts before proceeding with any patent application to protect your invention.