An inventor recently came in to discuss a new invention, but was concerned about investing significant funds and time for a patent application when he wasn’t yet sure there was a market for his invention. At the same time, he was concerned that by exploring the market without first having filed for patent protection, his invention could be taken by another company. This is a common dilemma for individual inventors and small businesses with limited resources to expend on patent protection. One option that is available in these circumstances is preparing and filing a provisional patent application.
What Is a Provisional Application?
A provisional application can preserve your rights to pursue patent protection later while you spend a year determining whether the market for your invention is significant enough to justify that effort and expense. Unlike a regular, or “non-provisional,” patent application, which requires certain formalities to be met, a provisional application can be less formal. It is by design a placeholder, preserving the applicant’s rights to file a patent for the invention for up to 12 months. During that time, an inventor can start making, selling and promoting her invention without fear (mostly) of someone else scooping the idea.
Advantages of a Provisional Application
Because there are fewer formal requirements and the filing fees are lower, a provisional application can be a significantly less expensive initial foray into the patent process than a regular application. For example, the drawings do not have to meet strict requirements and no claims or inventor declarations are required. Once filed, a provisional application preserves the inventor’s right to seek a patent for the invention described in the provisional application. This allows an inventor to freely explore production options and marketing for one year before having to commit to going fully down the road of the patent process. In addition, the date on which a provisional application is filed establishes the cut-off date for determining what prior art is applicable to your application. Everything from before the filing date is prior art, everything after is not. So, it allows you to preserve your priority (ahead of other potential inventors, for example) at lower cost than a regular application.
Drawbacks of a Provisional Application
A provisional application will never be examined for patentability by the patent office. Therefore, unless a regular application (or an international application) for the same invention is filed within one year of the filing of a provisional application, the provisional application becomes abandoned and nothing can ever come from it. This also means that it will take even longer than it usually does before you can get an enforceable patent. No patent can be enforced until it issues, and that can take several years even from the time of filing a regular application.
Filing a provisional further delays the process by up to a year. If obtaining an issued patent soon is an important consideration, a provisional application may not be the best path. In addition, although the initial costs associated with filing a provisional patent application are lower, in the long run the costs will likely be a little higher. This is because you have to pay two separate filing fees (one for the provisional and then later one for the regular application) and because there is a certain amount of extra work involved in the preparation of two separate applications, as opposed to just one regular application.
Scope of Protection
An important caveat is that while provisional applications can be less formal, they must nonetheless include a complete and adequate description of your invention. A provisional application can only preserve your rights in an invention to the extent the invention is disclosed in the application. A regular application filed later can only rely on a provisional application for what it actually shows. To illustrate, if your invention, as described in the provisional application, includes components a, b, and c, but you then file a regular application for an invention that includes a, b, c, and d, then the latter invention will not be considered to have been disclosed in the provisional application and will not be entitled to the filing date of the provisional application. You would, however, still get the earlier filing date for any claims in the patent that only cover a, b, and c. Anything that relied on newly disclosed information would only be afforded a filing date as of the filing of the regular application.
How Much Does It Cost?
Provisional applications are a popular option since they typically cost about $3000-$4000 less to prepare and file than a regular application. Total costs always depend on the nature and subject area of the invention, but a ballpark figure for a provisional application may be around $2000.