Provisional Application - Procedure and Benefits

Procedure and Benefits

To obtain the benefit of the "provisional" filing date, a non-provisional patent application must be filed, claiming benefit of the filing date of one or more specific provisional patent applications, prior to their expiration.

The provisional patent application is only pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application claiming the benefit of the provisional application must be done within 12 months. Otherwise, the rights to claim the benefit of provisional application are lost.

Such non-provisional application also must name at least one inventor common to those named in the "provisionals", and must claim the inventor's invention as disclosed in the "provisionals".

If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases). However, the original priority date of any expired provisional applications will be forfeited.

The provisional priority date is of little consequence for any claims in the issued patent that are not supported by the disclosure in the priority document. This makes it very important that provisional applications be sufficiently detailed. Otherwise, the validity of an issued patent may be challenged as to the priority date of its claims that purport to relate back to an insufficient "provisional". Furthermore, during the year after filing the first provisional (and prior to filing a non-provisional application), it may be useful to file additional provisional applications as improvements are made, and then claim priority of those found useful in drafting the non-provisional application(s).

One popular use of a provisional application is to document and "lock in" potential patent rights while attempting to obtain sponsors for further development (and for more expensive patent applications). This tactic may permit an inventor to defer major patent application costs until the commercial viability (or futility) of the invention becomes apparent. However, wise investors consider provisional applications in view of the long road to potential patentability, not to mention the limitations that may be defined by the prior art.

If a prior-art search during the one-year period reveals that what the inventor thought was the invention is found to be an obvious aggregation of prior-art elements or steps, the invention may still be patentable if the provisional application describes a non-obvious novel structure, element, or step. This novel structure can be claimed in the non-provisional patent application, instead of claiming the invalid aggregation.

Information Disclosure Statements (IDSs) are not permitted in provisional applications. Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.

The advantages of a provisional patent application are:

• ease of preparation,
• lower cost, and
• the ability to use the term "patent pending", which can only be legally used when a patent application has been filed, and which may have significant marketing advantages.

As of April 5, 2013, the USPTO small-entity filing fee is $130 for provisional patent applications having 100 or fewer pages of specification and drawings. Complexity involved for a provisional patent on the part of both the applicant and the USPTO is generally much less than that of a non-provisional patent application. Thus, it is possible to file a provisional patent application more quickly and cheaply than a non-provisional patent application.

It is also possible to convert a non-provisional application into a provisional, under limited circumstances (e.g., within a year of filing, when the applicant discovers a reason not to pursue the present non-provisional application).