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Provisional Patent Applications

By Doug Weller

A provisional patent application filed in the U.S. Patent and Trademark Office (USPTO) provides a way to obtain a patent filing date while delaying, for up to one year, some of the costs of filing and prosecuting a non-provisional utility patent application.

For an individual or company with small entity status (i.e., less than 500 employees) the basic filing fee (as of March 2013) for a provisional patent application is $130, while for a non-provisional patent application, the basic filing fee, search fee and examination fee is $730. No claims are required for a provisional patent application reducing some of the complexity and thus some of the costs of preparation of a provisional patent application vis-à-vis costs of preparation of a non-provisional patent application.

Because of reduced cost and reduced complexity, some inventors on a budget choose to file a provisional patent rather than a non-provisional patent application. To further save costs the inventors may prepare and file the provisional patent application themselves, perhaps with minimal help from an attorney to review and file the provisional patent application. While this can be significantly less expensive than filing a non-provisional patent application, those choosing this route should do so with their eyes wide open to the inherent limitations of provisional patent applications as well as the potential pitfalls in this approach.

Inherent limitations and potential pitfalls

A provisional patent application is not examined by the USPTO and does not mature into a U.S. patent. It is automatically abandoned (expires) after one year. To utilize a filing date of the provisional patent application, another patent application (typically a U.S. non-provisional utility patent application) must be filed before the provisional patent application is abandoned and claim the benefit of the filing date of the provisional patent application. The benefit of the filing date of the provisional patent application is only available for inventive subject matter for which the provisional patent application provides an enabling disclosure. Thus if a provisional patent application is poorly written, certain patent rights may be irretrievably lost.

Recommendations

My usual recommendation to clients is to file a non-provisional patent rather than filing a provisional patent application. In a quality patent, there is high interdependence between the subject matter claimed and the subject matter disclosed. Determining what subject matter should be disclosed in a patent application is best done in a context where the invention and how it is to be claimed is fully understood. Without a thorough understanding of the inventive subject matter and how it is to be claimed, it is very easy to over disclose or under disclose information about the invention. Typically, for a patent attorney who thoroughly understands what should be claimed and thus what should be disclosed in a patent application, the additional time to prepare non-provisional patent application verses a  quality provisional patent application is relatively insignificant.

For inventors who want to save money by performing work themselves, a provisional patent application can allow them to get a low cost start in the patent process. An early filing date provided by the provisional patent application takes on added significance as the recent patent legislation moved the U.S. from a first to invent to a first to file patent system.

An investment in a good “how-to-patent-it-yourself” book is advised before an inventor attempts to prepare and file a provisional patent application for his own invention.

For more information on the process of obtaining quality patents you can read further on this website or contact patent attorney Doug Weller.

This website provides general information and is not intended as legal advice or to guarantee a particular outcome in a legal matter.

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