Filing Provisional Patent Applications for Fun and Profit

Patents are an essential leg in the business plan for people and companies developing new ideas and technology. An issued patent confers significant legal rights on its owner and is typically an essential asset, that can be the basis of financing and an expectation of a stream of revenue.

In many cases, an early step in the patenting process is filing a provisional patent application. This discussion will address the issues and benefits of filing provisional patent applications.

What is a Provisional Patent Application?

First, let’s digress for a minute and talk about regular, non-provisional patent applications. A non-provisional patent application has substantial formal requirements. It has to be formatted in certain ways, the specification should have certain parts, it has to have claims, it has to have an inventor’s declaration, and it requires fees for search and examination. A non-provisional patent application also triggers the patent expiration clock - patents normally expire in all major countries twenty years from the non-provisional filing date.

A provisional patent application does not require many of these features. The most important features of a provisional patent application are that there are no mandatory formatting requirements, the filing fees are much lower, and a provisional patent application does not start the twenty-year expiration clock.

Provisional patent applications are not examined, and never issue as a granted patent, so there is never a thing called a “Provisional Patent.” There are only “Provisional Patent Applications.”

What Must a Provisional Patent Application Contain?

The essential contents of a provisional patent application are that it must disclose the invention. This can be a drawing on a napkin, a powerpoint presentation, a manuscript for a journal article, or another informal medium. A provisional patent application can also be formatted just like a regular patent application.

The point is that down the road, patent examiners, potential business partners, and potential litigants will look back to see what you have disclosed and when. This can be very important in preserving your rights and enforcing or defending your patent in the future.

The date of disclosure is essential because challengers will argue that your invention is obvious or anticipated in view of others working in the same or similar fields. However, a public disclosure by someone else related to your invention cannot be used against you in an obviousness or anticipation argument if it was published or disclosed after your filing date. So you want the earliest filing date possible in most cases.

What Should I Do if I File an Informal Provisional Patent Application?

As discussed above, applicants can file an informal provisional patent application, for example, a scan of a dinner napkin with a drawing. However, you can also file an application that looks like a real patent application - meeting all of the formal requirements of a non-provisional patent application. There may be many good reasons to file an informal provisional patent application. But ultimately, potential partners and challenges to a patent may be looking critically at your invention, and they will want to see something that looks like a real patent application. So if you file an informal provisional, at the earliest opportunity, you should have a patent attorney draft a more formal version that will withstand scrutiny.

Provisional Patent Applications Preserve Your Rights

An excellent reason to file a provisional patent application is to preserve your rights in a public presentation. If you plan to present your idea in a public forum, for example to investors, or in a scientific meeting, you will not be able to get non-disclosure agreements from the audience. Investors, in particular, will never sign a non-disclosure agreement unless they are very interested in a particular project, after an initial non-confidential introduction.

Filing a provisional patent application solves this problem. By filing a provisional patent application, you preserve your rights as far as disclosure. You will minimize your risk of an invention being misappropriated if you have a patent application on file prior to making a public presentation. So, if you plan to make a public presentation of new subject matter, it can be a good idea to have a patent application on file prior to the date of the presentation.

Warning About Provisional Patent Applications: They Expire After One Year

A very important feature of a provisional patent application is that they expire after one year. So if you file a provisional patent application on say, September 1, 2018, you must file a non-provisional application (national or international) claiming priority to your provisional on or before September 1, 2019 (but if that date falls on a holiday or weekend, you can file the next business day). This is a very harsh rule. If you blow through the anniversary date, you basically have no recourse and you will lose the original filing date.

Can I File More than One Provisional Patent Application?

Yes! provisional patent applications are not allowed to contain a priority reference, and there is nothing to stop you from filing additional provisional patent applications as a project develops and new data and new ideas are developed. In fact, you may make a strategic decision to abandon a particular provisional patent application, for example, if a project shifts and the disclosure isn’t helpful. All provisionals filed during the course of a year can be used in the priority claim of a non-provisional patent application.

What Do I Need To Do After Filing A Provisional Patent Application?

After a provisional patent application is filed, a non-provisional patent application must be filed claiming priority to the provisional patent application. This must be done on or before the first anniversary of the provisional filing date. There is a box in the forms when filing a non-provisional patent application for inserting the provisional filing data. In addition, the first paragraph of a non-provisional may contain a reference to a provisional patent application. This is called a priority claim.

A non-provisional patent application can be a national patent application or an international patent application, filed through the Patent Cooperation Treaty (PCT).

Tying This Altogether

To summarize, provisional patent applications are less expensive to file than non-provisional applications, they have no formal requirements (but must disclose the invention), and they are not examined. Provisional patent applications give the inventors a patent filing date, which is very important for preserving rights during patent prosecution and in the event the patent is challenged in the future.

The strategic issues around provisionals can depend on financing and the nature of the invention. If money is tight for a project, a provisional can get your foot in the door at minimal cost.

Another reason to file a provisional patent application is because a provisional in effect confers an extra year of patent life. As noted above, the filing of a non-provisional patent application triggers a twenty-year clock, at which time a patent expires. Since provisionals don’t trigger this clock, filing a provisional and waiting the full year to file a non-provisional in effect gives you a twenty-one-year patent expiry.

In subject areas where the product life cycle is likely to be long, the extra year of patent life may be of great value. A classic case is pharmaceuticals. Pharmaceuticals almost always have long approval cycles, but in many cases, drugs can be valuable indefinitely, so the product life cycle is very long. Because of market forces, the final year of patent life for a drug can be extremely valuable. So the extra year of patent life from a provisional filing can be very valuable for a drug product.

Contrast this to an invention that would be used in a smartphone. It is likely that almost nothing in a smartphone purchased today will be useful in phones designed five years from now. So the lifecycles in smartphones are very short. In these cases, a provisional patent application does not give you much.

Should I Do This Myself?

Most things in the patent world are complex and full of rules and traps for inexperienced applicants. So the short answer is NO - don’t try this yourself. Always consult with an experienced patent attorney when doing anything related to patents. Even if you are trying to save money by maximizing your input into a patent application, an experienced patent attorney can help guide you to get a better outcome.

About The Author

Andrew Berks is a NYC Patent Lawyer at Perdomo Law in Manhattan. Learn more about patent legal services by visiting their website.