Are provisional patent applications worth it? In the first-to-file universe, some inventors mistakenly think that if they file a provisional patent application it will somehow mature over time into a full-blown patent, which is not the case. Rather, if a provisional patent application is electronically filed with the United States Patent and Trademark Office (USPTO) then the application generates an acknowledgment receipt with a serial number. This is considered “patent pending” which allows the applicant to mark or advertise his or her invention as such without fear of violating USPTO statutes and incurring fines (read this article on patent marking for more details).
What is it?
A provisional patent application is a somewhat less formal version of a non-provisional patent application, with less up-front costs, and is initially only examined for the presence of a detailed description and drawings. No examination into the claim scope of a provisional is ever carried out by the USPTO.
The provisional serves as the basis for filing a non-provisional patent application from up to one year from the filing date of the provisional. The provisional patent application still maintains the filing date of the provisional for all subject matter disclosed therein. Due to the lesser formality requirements with provisional applications, many times the applications are less expensive and quicker to prepare than a non-provisional. That said, inventors should take care that the lesser formality requirements of provisionals does not lead to a provisional that does not fully support claims later presented in a utility patent application.
Provisionals can serve as the basis for nonprovisional applications in the United States (also referred to as a utility application) and foreign applications, including Patent Cooperation Treaty (PCT) applications. Certain foreign countries may have specific laws and legislation governing provisional patent applications.
Is a provisional patent application worth it?
There are certain situations where a provisional patent application might be recommended. These include situations wherein the inventor wants to delay patent costs, conduct further market research or product development, or needs a patent application filing date quickly.
If the decision to draft a provisional patent is made, it is generally accompanied by the drafting of a claim set, along with a very good detailed description and drawings. The drafting process usually takes one to two weeks to complete.
Interested in learning more about patent applications and other aspects of protecting your intellectual property? Email firstname.lastname@example.org or call (919) 348-2194.