The provisional patent application explained

To understand the provisional patent application, you must first understand the difference between provisional and non-provisional patents. The non-provisional patent is what is traditionally thought of as the “full” patent. It can be of either a “utility” or a “design” variety, and it establishes the filing date and begins the USPTO’s patent review process.

On the other hand, the provisional patent application provides temporary protection in that it establishes the filing date but does not start the USPTO review. The provisional patent application is good for one year from the filing date. It is significantly cheaper than a non-provisional patent and provides the inventor with a 12–month period in which to market and/or develop their invention (while using the term “patent pending”) before they need to invest in a “full” non-provisional patent.

The provisional patent application does not require the patent claims, which are a key element of the non-provisional application. Additionally, a provisional application is not examined by the USPTO and does not convert to a regular patent. The inventor must submit the non-provisional application within one year of the provisional filing date. Otherwise, they are not able to use the original filing date of the provisional application.

A provisional patent application should include the following elements, which are significantly scaled back from the non-provisional application:

• Cover sheet – identifying the provisional application, the name of the inventor, and other bibliographic data
• Description of invention – invention claims are not required, just an adequate description of the invention
• Drawing – if necessary to understand the invention
• Filing Fee – at the time that I’m writing this guide, the fee is $100.

Is a provisional patent application for you?

In most cases, I recommend that you do file a provisional patent application prior to moving forward with the non-provisional application. A provisional patent application will provide you with some relatively quick and inexpensive protection for your idea. It can usually be filed with minimal effort and cost, while providing the inventor up to one year to work through the development and marketing of their invention.

The primary reason I recommend a provisional application is to allow you a lower cost opportunity to seek out prospective manufactures to license your invention for royalties prior to investing in a non-provisional patent, which can cost thousands of dollars. Also, it is sometimes possible to negotiate up-front money in a license agreement, which could cover the costs of filing the non-provisional patent application, or the company may agree to cover the patent expenses itself. Note: The provisional patent application is not valid with “design” materials. They can only be filed in relation to “utilitarian” inventions. More information about “design” versus “utility” patents can be obtained at www.uspto.gov.