What is a Provisional Patent Application?

A provisional patent application is a sort of “patent-lite,” so to speak. When a completed provisional application is received by the patent office, it is assigned a filing date and a serial number. It expires after one year from the filing date.

You are given the benefit of having “possession” of any subject matter disclosed in the application as of the filing date, provided the disclosure is enabling for what is disclosed.

However, a provisional patent application, unlike a design patent application or a non-provisional patent application, will not be examined and will not issue as a patent.

A provisional application merely serves as a placeholder for a subsequent filed non-provisional patent application that claims the benefit of the filing date of the provisional application. A design patent application may not claim priority to a provisional application, though.

To claim the benefit of the filing date, you must file a non-provisional patent application within one year of the provisional application’s filing date and assert your claim to the filing date of the provisional in the specification and an Application Data Sheet (or ADS).

Why would you want to file a provisional patent application?

Three main reasons apply: Cost, Speed, and Delay. I know the last two sound like they conflict, but bear with me.

First, cost:

The filing fee for a provisional application is $130 for a small entity, half-that for a micro-entity. So, it is cheaper than filing a full non-provisional application. And, if you use a patent attorney or agent, many charge less for drafting a provisional than a non-provisional application.

Second, speed:

Provisional applications may be prepared quickly, making them convenient for when there is no time to draft a full non-provisional application or search the invention prior to filing.

A provisional application does not need to meet all the formal requirements of a non-provisional patent application, such as margins, font size, and other technical requirements of the specification. Formal drawings and claims are also optional.

Because the provisional application will not be examined, you are free to include photographs and color drawings, which avoids the necessity and delay of having a draftsman prepare formal patent drawings. The specification and drawings also do not need reference numbers.

A provisional application does not need oaths or declarations of inventorship and other application paperwork that non-provisional applications frequently require.

All of these factors allow you to prepare and file a provisional application quickly. Because the United States is now a “first to file” system, the faster you can get a patent application on file, the less risk there is that another will have beaten you to the patent office.

This flexibility of the provisional, however, can also work against you. An incomplete or half-baked provisional disclosure may not be enabling for your invention, resulting in a loss of the priority date. This situation could be fatal to obtaining a patent if an earlier disclosure was made. Therefore, to the extent possible, try to provide as much disclosure as possible in the provisional application. The more complete the provisional application is, the better.

Third, delay:

Because the provisional application lasts for one year, but doesn’t count against the patent term of a non-provisional patent application claiming priority to it, the provisional application allows you to delay your decision to prepare and file the more expensive non-provisional application. This feature allows you to explore whether there is a market for your invention or conduct further research and development or find investors, prior to making substantial investments, all without the risk of losing your patent rights.

In summary, provisional patent applications can be a useful tool for you to document your invention quickly, in a cost-effective manner, and allows you to delay your decision about filing a full, non-provisional application. However, care must be taken in preparing the provisional application to ensure it is enabling for the disclosed subject matter.

What Kind of Patent Application Should You File?

After inventing a new product and deciding that you would like to file for a patent, you must decide what kind of patent application to file. The choice is largely dependent on what you have invented. Or another way to look at it, how many inventions you actually created. Your invention may overlap more than one kind of patent application and, in those instances, you can choose to file for more than one of these.

Under US law there are three different kinds of patents: utility patents, design patents, and plant patents. There is also the Patent Cooperation Treaty (or PCT) patent application and other foreign patent applications, but we will save that discussion for a later post about patenting in other countries.

Each kind of patent is directed to different kinds of patentable subject matter.

Utility patent applications cover new and useful processes, machines, articles of manufacture, or composition of matter, and any improvements to these. Utility patents further come in two flavors—provisional and non-provisional.

The non-provisional application includes a written specification with, often annotated, drawings, that describe how to make and use the invention and one or more claims pointing out what the inventor believes is their invention.

A provisional application is similar to the non-provisional, but does not have all the formal requirements of the non-provisional application. The provisional application mainly serves as a placeholder for a subsequently filed non-provisional application, and is useful for filing on an invention quickly.

Design patents cover new and ornamental design of a functional item. With a design patent application, the drawings (or photographs) of the invention are the disclosure. If it isn’t shown in the drawing, then it is not part of the design. One useful way of distinguishing a design patent from a utility patent is that design patents are about way the invention looks, regardless of the how it works, while utility patents are about how the invention works, regardless of way it looks.

Plant patents cover asexually reproduced plants, with two exceptions, notably, tubers and uncultivated, or naturally occurring, plants. Like a utility patent application, the plant patent application includes a written specification and drawings. Not to be confused with the plant patent, there is also a plant variety certificate, also called a “PVP certificate”, which covers sexually reproduced varieties of plants and tubers. PVP certificates are issued by the Department of Agriculture, whereas, plant patents are issued by the USPTO.

As I mentioned earlier, your invention may be eligible subject matter under more than one type of patent application. However, design and plant patents, by their nature, don’t overlap. A plant isn’t a functional item and you can’t grow a design.

A new plant invention, though, may be eligible for plant patent and utility patent protection. For instance, if you genetically engineered your plant or created a process connected with manufacturing or cultivating your plant, you may file a utility patent for those aspects and a plant patent on the asexually produced variety. Therefore, if you think you have invented a new plant you should investigate both plant protection and utility protection.

An invention may be eligible for design patent and utility patent protection. Frequently, an invention may have both aesthetic design aspects and functional aspects. Therefore, you can file an application on each “invention” found in your creation; the design invention embodied in the aesthetic features and the utility invention embodied in the functional aspects.

So, in summary, there are three types of patents: utility patents (with provisional and non-provisional sub-types), design patents and plant patents. Your invention may overlap more than one of these categories. Therefore, you should investigate each and plan a strategy for how to protect your invention.

I hope you have found this presentation useful and informative. You can like and subscribe to my podcast or my youtube channel to be notified when new episodes are posted.

My name is Josh Stockwell and I am a patent attorney working in Providence, Rhode island. If you have any questions, you can reach me by email at jas@barjos.com or by phone at 401-228-8234 or 401-297-9012.

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