What is a Provisional Patent Application and Should I File One? Episode 8
These articles are near verbatim transcripts of my “Patenting for Inventors” podcast. Click here, or the podcast image to get to the podcast feed.
What is a Provisional Patent Application and Should I File One? Episode 8
This episode is going to be about provisional patent applications. What is a provisional patent application. A really gross oversimplification of a provisional patent application is that it is a rough draft of real patent application that gets you an earlier filing date compared to if you wait to file the final version of your real application, called a non-provisional application.
I say this is a gross oversimplification because if you actually treat your provisional like a rough draft of an application, then you’re wasting your time filing it and you should just file a non-provisional, but I’ll go into the details of that in this episode, and why you shouldn’t treat your provisional application like a rough draft.
In order to understand what provisional patent applications are you should first understand what a non-provisional patent application. Non-provisional patent applications are what most people are talking about when they say that they’ve filed a patent application. The non-provisional patent application you can think of as the regular patent application.
The terminology is a little confusing, because the one that has the word “non” in it, the non-provisional application, is the regular application that gets examined by a patent examiner, and the one that actually has the potential to turn into a patent.
A provisional application will not be examined by a patent examiner and will not turn into a patent. Let me repeat, a provisional patent patent application will not be examined by a patent examiner and will not turn into a patent by itself. So what’s the point of a provisional patent application if it won’t turn into a patent.
There are several reasons why inventors file a provisional patent application. One is that it buys the inventor time to file the real, or non-provisional application. Two is that it is less expensive than filing a non-provisional application. And a third, is that you use it as an emergency measure if you disclosed your invention or you are just about to disclose your invention and you need to get something on file at the patent office very quickly. There are usually more reasons not to file a provisional patent application than there are to file a provisional patent application.
Let’s go through the difference between a provisional and non-provisional patent application and why they are quicker and cheaper to do. First, you don’t need any special formatting in a provisional patent application. You can submit photographs, scans, hand drawings in a provisional, and you don’t need to file formal figures like you do in a non-provisional patent application.
In a non-provisional patent application there are very specific drawing rules and you generally will have to pay a draftsman a fair amount of money to get the drawings done right for the patent office to accept them. Also, you don’t need any claims in a provisional application. Remember, the claims are the the boundaries of what your invention is. This is what an patent attorney is really useful for, and in a provisional application, you don’t need that.
So what do you need in a provisional. All you need is a written detailed description of what your invention. This is why it is cheaper because you, as the inventor can probably describe it pretty well if you are detailed in your description and you don’t necessarily need an attorney to do it for you. Also, the filing fees at the Patent Office are cheaper than a non-provisional.
If you’re a small inventor, the filing fee is currently $65 or $130, which is cheaper than the $400 or $730 for a non-provisional. These fees are going to go up soon, so be sure to check them out on the patent office website for current fees. Along with the provisional application itself, you also need to fill out a cover sheet form, which is just a two page form available on the patent office website.
What does the provisional application do for you if it doesn’t turn into a patent. Basically it establishes a filing date, and from this filing date, you have 12 months to file your non-provisional application that will have all the claims and formal figures. As an example. You file a provisional patent application on January 1, 2018. On this date, you can write “patent pending” on your product. By January 1, 2019, you have to file your non-provisional application if you want to take advantage of that earlier filing date of 2018.
Why is an earlier filing date useful. If some reference that was very similar to your invention came out on February 1, 2018, a month after you filed your provisional patent application, and the examiner is reviewing your non-provisional patent that was filed on January 1, 2019, the examiner is not allowed to use that February 1, 2018 reference against you. It’s as if you had filed an application on the earlier start date, even though that provisional application was never examined. If you had just filed the non-provisional patent application on January 1, 2019 and never filed that provisional a year earlier, then the February 1, 2018 reference that the examiner found could be used against your patent.
So far, the provisional sounds great, it’s cheaper, you might be able to do it without an attorney, you don’t need formal drawings, or claims. I have a year to decide whether to file a non-provisional, I can put “patent pending” on my product, it allows me to talk about my invention.
So what’ the problem? The problem is that a provisional application is only as good as the description that you have in it. If you didn’t describe your invention in the provisional application sufficient enough then it’s useless because whatever you claim in your non-provisional application a year later has to have support in the provisional application.
Here’s an example. Let’s say you have an invention for the new avocado slicer. I talked about the 3-in-1 oxo avocado slicer before. It has a slicing blade at one end, a pitter in the middle and a multiblade loop at the other end.
Let’s say you want to file a provisional application. You describe the slicing blade really well. You describe the multiblade loop at the other end really well, and you describe a pitter in the middle, but you didn’t really describe how the pitter has little blades that come out that poke the pit so it’s able to grab the pit and pull it out.
Maybe you hadn’t thought of that exact feature or you thought of it but you just did a horrible job of describing it in your provisional application. You file the application on January 1, 2018, then you start talking to people about your new device because you think you’re safe because you filed a provisional patent application.
12 months later on January 1, 2019 you file your non-provisional, your regular patent application, and by this time, in your application you’ve described really well the pitting part, and you end up getting a patent on your 3-in-1 slicer and one part of claims of your invention are the blades that stick out of the pitter. If you didn’t describe the blades in the pitter that grab onto the pit, then your provisional didn’t provide support for your non-provisional.
You might still initially a patent for your device, but let’s say someone comes along later and says that your patent is invalid because that exact same kind of pitter with blades coming out of it was already in the public on June 1st, 2018.
Now, if you did your provisional right, you could say “You can’t use that June 1, 2018 reference against me, because I filed a provisional on January 1, 2018 and my non-provisional application claims priority to the earlier filed provisional.” If you described your pitter in detail in the provisional, that would be true, but if you didn’t, then you don’t get the benefit of that earlier date, you would only get the date of filing of your regular patent application on January 1, 2019.
And since the pitter was in the public before you filed your non-provisional application, it can be used against you patent and your patent might get invalidated. Even your own disclosures can be used against you. So if you started talking about your invention to people that you didn’t have sign a non-disclosure agreement, then its possible this can be used against you.
In the U.S., there is still is a 12 month grace period for disclosures made by you, that I talked about in episode 5, but most countries don’t have any grace period and it’s always dangerous to start relying on grace periods because you don’t know what else people are going to start disclosing after you make your disclosure. It’s better not to disclose at all, or if you do disclose, make sure it is something that has been adequately described in your provisional application.
So you see the problem with provisionals, they’re only as good as your description of your final invention that you end up putting into your non-provisional application, but you don’t know what you’re going to put into your non-provisional application until you actually file it. That’s why you’re taking a risk when you file your provisional.
You don’t know exactly how you’re going to describe or write up your invention in your non-provisional until you actually do it. Because of that if, you do file a provisional, you want to make sure that you describe everything in great detail and if you’re already going to all the effort to describe in great detail your invention, why not just spend the little extra time and money to write up claims and do formal drawings for a non-provisional to start with and skip the provisional altogether? That’s usually the advice I give my clients.
Usually the only time I recommend it is when someone says to me that they’re presenting their invention somewhere to people that have not signed a non-disclosure agreement. Maybe they’re going to a kitchen appliance show, and they’re going to show off their new carrot peeler. Maybe they’re going to meet with investors next week and they have nothing on file with the Patent Office.
In those cases, a provisional patent application is better than nothing and there just isn’t time to write up a formal patent application. I tell them that if they write up their invention, send me tons of photos and describe as best they can every single part, then I’ll do the filing for a relatively inexpensive amount of money because I’m not really doing much legal work since I won’t be writing the claims and describing the invention using patent language.
I might recommend it to someone that doesn’t want to pay thousands of dollars upfront for a non-provisional application, but still wants something on file with the patent office. Depending on the amount of work an attorney does, a provisional might be between one and two thousand dollars, while a non-provisional for the same invention could be six thousand dollars or higher. It really depends on the complexity of the invention and how much work the attorney is going to do. Usually those are the only times I’m going to recommend a provisional and I only recommend it because it’s better than nothing, not because it’s a good idea to do.
Drug companies will often file provisional patent applications for another reason that don’t really apply to the small inventor so I’m going not going to go into those details, but just know that there might be other peculiar situations where a provisional patent application is the best thing to do.
Remember, that once you file a provisional patent application, you only have 12 months to file your non-provisional, or regular application. You probably want to start planning to file your non-provisional patent application at least 2 months before the deadline and if you are interested in filing patent applications in foreign countries, know that the 12 month date also applies to filing in those other countries. I’ll cover foreign patent applications in another episode.
If you don’t file a non-provisional or international patent application by 12 months, then your provisional application goes abandoned. It’s as if you had never filed it at all. It never gets published so no one will ever see it. It doesn’t mean you can’t file your non-provisional patent application after 12 months from your provisional, it just means that you won’t be able to claim the benefit of that earlier filing date that the provisional had, so that more prior art can be used against you in rejecting your patent application.
One tip that I would tell you that you don’t see too often is that even though claims are not required for provisional applications. I would still write at least one very broad claim. It should be something like “I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration.”
The reason why it’s a good idea to write this one thing has nothing to do with your U.S. patent, but because if you file any foreign application, you never know if some foreign patent office won’t go by the U.S. rule that claims are not required, and you just want to have something written down to show that you actually claimed an invention in your provisional application even though that claim is so broad that it would never be allowed anywhere, it’s just a safe practice to do.
If you would like help with your provisional or non-provisional patent applications, I do offer those services through my practice at Diament Patent Law.
- Dec 9, 2017 What is Intellectual Property and What Kind do I Need? Episode 1
- Dec 11, 2017 Is My Idea Patentable? Episode 2
- Dec 13, 2017 Is My Invention New, Useful, and Non-Obvious? Episode 3
- Dec 18, 2017 Patent Searches and How to Find Similar Inventions. Episode 4
- Jul 4, 2019 Should I Tell People About My Invention and What are the Patent Application Deadlines. Episode 5
- Jul 5, 2019 How to Read and Understand the Parts of a Patent. Episode 6
- Jul 5, 2019 The Patent Application Process. Episode 7
- Jul 6, 2019 What is a Provisional Patent Application and Should I File One? Episode 8
- Jul 11, 2019 Claim Drafting Part 1 - Identifying Your Invention? Episode 9
- Jul 13, 2019 Claim Drafting Part 2 - Anatomy of an Apparatus or Device Claim. Episode 10
- Jul 13, 2019 Claim Drafting Part 3 - Anatomy of a Method Claim. Episode 11
- Jul 14, 2019 Claim Drafting Part 4 - Independent and Dependent Claims. Episode 12
- Jul 23, 2019 Claim Drafting Part 5 - 10 Quick Tips for Claim Drafting . Episode 13