Provisional patent applications: thoughts and suggestions

provisional patent applications
Provisional patents are a bit like duct tape.

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures are called “provisional patent applications.” These are also called “provisional patents,” “provisional applications,” or even just “provisionals.” If used correctly, they can help you start the process of obtaining a patent.

The USPTO doesn’t examine provisional patents. Instead, the USPTO merely stores them in their databases for a year.  After a year, they expire, unless before expiration, you file a regular (non-provisional) utility patent application that references that provisional application.  If you do this, the USPTO links the provisional application to the full patent application and preserves it.

Later, during the examination of the subsequent regular utility patent, you can reference the provisional patent to try to overcome various rejections. Usually, you do this to prove you were the first inventor to file. You can also use the provisional application to try to satisfy examiner requests for additional detail.

Provisional patent applications have few requirements, but be careful!

Regular patents have detailed requirements for format, figures, and claims. They tend to be expensive to file.  By contrast, provisional patents have almost no format requirements, and they are often less costly to file.  With the correct USPTO forms and fees, you can submit almost anything.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch. They also can be as complex a fully developed 100+ page formal patent application.  The USPTO will cheerfully accept either one of these.

The lack of format requirements can be helpful. Provisional applications are an easy way to put a lot of supplemental information on the record. This information can include research papers and user manuals, for example. These can be very useful for addressing subsequent examiner rejections.

The bad news, however, is that many a patent application has failed because the inventor first filed a poor quality provisional application. The real problem is if you submit something unsatisfactory and then operate under a false sense of confidence that you are protected.

Dangers of low-quality submissions:

The dangers of a poor quality provisional application are both delayed and subtle.  At first, everything is fine.  Then, typically about 1-3 years after you file the inadequate provisional, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (standard utility) patent ahead of your regular utility patent.  Under today’s rules, almost the only way to establish that you invented first is to cite your earlier filed provisional. You also have to show precisely which parts of the provisional application prove that you invented first.

If the examiner reviews the cited portions of your provisional and agrees, then the provisional application has been successful. You have overcome this rejection.  But if the examiner reviews it and says, “I don’t see the invention here,” then you are in trouble. Your provisional has likely failed, and you may never be able to prove that you invented first.

Three different provisional strategies:

I think that it is useful to think about three different categories of provisional patents.  These categories are: 1) quickly file your existing write-ups; 2) file a rough draft of a regular utility patent; and 3) file a complete utility patent, but do so as a provisional patent rather than as a proper utility patent.

Risky, fast, and cheap:

Category 1:  quickly file your existing write-ups.  These can be existing papers, PowerPoint presentations, handouts, whatever.  The argument in favor of this approach is that this is the quickest way of getting something on the official patent record.  This approach also lets you file a lot of supplemental information.  Worst case, you can later abandon an improperly thought out provisional.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

An excellent way to go:

Category 2:  file a rough draft of a regular utility patent. Inventors and small companies often operate on a limited budget and need to get something submitted on a short deadline.  Here the goal is to try to file something relatively decent, but quickly and on a tight budget.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent. This rough draft follows the standard utility patent format, which provides some vital structure.

This approach tries to capture a good chunk of the value of a full patent application. It also seeks to keep costs at about 50% of a standard patent. Here, the trick is to focus on a few essential draft claims, informal but adequate figures, and at least the most critical technical aspects of the disclosure.

A tricky strategic option:

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue. You may want to do a quality job submitting what you have. However, you may also think that there is a possibility that you will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent is written. But instead of filing it as a regular utility patent, you submit it as a provisional patent.  

This provisional application can then be “aged” for up to a year.  If there are no changes, you can then refile it as a full utility patent.  Otherwise, you can update your earlier provisional, and then file it as a full utility patent.  An additional advantage of this Category 3 approach is that it can effectively increase the lifetime of the final patent by up to a year.

Remember the international filing deadlines:

A few other nuances – if you are interested in foreign patent filings, realize that the 12-month foreign filing deadline starts ticking from the time you file your provisional application.  Thus the 12-month provisional expiration deadline, and the US and international patent filing deadlines, all fall on the same day.

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