Law Office of Doug Weller

San Jose Patent Attorney

Silicon Valley, California

Contact now

Quality Patents

Patent Applications

Provisional Patent Applications

Novelty and Nonobviousness

Business Methods

Patent List

Reference Links

Provisional Patent Applications

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 utility (aka, non-provisional) patent application.

For an individual or company with small entity status (i.e., less than 500 employees) the basic filing fee (as of October 2008) for a provisional patent application is $110, while for a utility patent application, the basic filing fee, search fee and examination fee is $545. 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 utility patent application.

Because of reduced cost and reduced complexity, some inventors on a budget choose to file a provisional patent rather than a regular utility patent application. To further save costs the inventors may prepare and file the provisional patent application themselves, perhaps with minimal help from an online service in completing the necessary forms. While this can be significantly less expensive than filing a utility 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 do-it-yourself patent procurement.

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. 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 utility patent rather than first 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 utility patent application verses a  quality provisional patent application is relatively insignificant.

For inventors who cannot afford a patent attorney, a provisional patent application can allow them to get a low cost start in the patent process. However, because of the inherent limitations of a provisional patent application and the potential loss of rights resulting from a poorly prepared patent application, I recommend purchase and study of a good “how-to-patent-it-yourself” book 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.