provisional patent

What is a provisional patent?
To understand the provisional patent, you must first understand the difference between provisional and non-provisional patents. The non-provisional patent is what is traditionally thought of as the “full” patent. It can be of either a “utility” or a “design” variety, and it establishes the filing date and begins the USPTO’s patent review process. On the other hand, the provisional patent provides temporary protection in that it establishes the filing date but does not start the USPTO review. The provisional patent is good for one year from the filing date. It is significantly cheaper than a non-provisional patent and provides the inventor with a 12–month period in which to market and/or develop their invention (while using the term “patent pending”) before they need to invest in a “full” non-provisional patent. The provisional patent does not require the patent claims, which are a key element of the non-provisional application. Additionally, a provisional application is not examined by the USPTO and does not convert to a regular patent. The inventor must submit the non-provisional application within one year of the provisional filing date; otherwise, they would not be able to use the original filing date of the provisional application.

A provisional patent application should include the following elements, which are significantly scaled back from the non-provisional application:

• Cover sheet – identifying the provisional application, the name of the inventor, and other bibliographic data
• Description of invention – invention claims are not required, just an adequate description of the invention
• Drawing – if necessary to understand the invention
• Filing Fee – at the time that I’m writing this guide, the fee is $100.

Do I need a provisional patent?
In most cases, I recommend that you do file a provisional patent prior to moving forward with the non-provisional application. A provisional patent will provide you with some relatively quick and inexpensive protection for your idea. It can usually be filed with minimal effort and cost, while providing the inventor up to one year to work through the development and marketing of their invention. The primary reason I recommend a provisional application is to allow you a lower cost opportunity to seek out prospective manufactures to license your invention for royalties prior to investing in a non-provisional patent, which can cost thousands of dollars. Also, it is sometimes possible to negotiate up-front money in a license agreement, which could cover the costs of filing the non-provisional patent application, or the company may agree to cover the patent expenses itself. Note: Provisional patents are not valid with “design” materials. They can only be filed in relation to “utilitarian” inventions. More information about “Design” versus “Utility” patents can be obtained at www.uspto.gov.

Can I file my own patent application?
This question is a matter of opinion; therefore, I will give you mine, which differs depending on the type of application you are filing.

* Provisional Application – Absolutely! The provisional application process is not overly complicated; therefore, I believe that many inventors can file a reasonably good application if they spend the time researching and understanding the application process and writing the application. Although, if you do not have the time, the cost to have someone else prepare it is usually under a thousand dollars (our company charges $499). In this case, it may be worth your time to hire a third party.

* Non-provisional Application – Absolutely NOT! Although there are many good books on the topic of filing your own patent application, the process is not easy. In my opinion, even with patent filing books as your guide, the process is difficult and requires a level of expertise that only comes with practice. Although you may be able to work through the components of the application, capturing the optimal language in the claims section is not trivial. This is one time that you should rely on the expertise of a registered patent attorney. If you do not have one, I would be happy to refer you to several.

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