When is best to use a provisional patent application?

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By Gene Quinn

In many, if not most or even nearly all, situations the invention as you initially conceive of it will not be the invention that you ultimately want to patent. Many times you will come up with an invention and want to protect it but you know you will need to continue working on it.  There are things you want to make better, things you need more time to research and develop and in many cases you are seeking to obtain patent pending status before you have 3D renderings, engineering drawings or even an initial or intermediate prototype.

If you are at the beginning stages of invention it makes no sense to take on the cost associated with preparing and filing a nonprovisional patent application (i.e., the application you will eventually need to file in order to actually obtain a patent). For most inventors the fees due at filing of a nonprovisional patent application will be about $600 more than the filing fees due at the time of filing a provisional patent application. Budget preservation is essential.

Of course, while inventors should move forward responsibly within a budget, the importance of obtaining an early filing date cannot be over stated. The U.S. is a first to file country. Although there are some very narrow exceptions, inventors really need to act as if U.S. patent law sets up a race to the Patent Office, which it largely does. This means inventors want to get an application on file as soon as practically possible. Thus, provisional patent applications, which are cheaper to file and do not require any particular formalities in terms of disclosure, should be an important part of every patent protection strategy.

When you file a nonprovisional patent application it is critical to understand that the application is set in stone. You cannot add disclosure to the application. If you file a nonprovisional patent application today and tomorrow come up with a significant improvement you would have to file a second nonprovisional patent application. This makes rushing to file a nonprovisional patent application particularly unappealing from a budgetary standpoint.

Most inventors simply cannot possibly describe everything they will ultimately want to patent because they don’t have the invention complete when it becomes apparent that there is at least something worth protecting. Invention requires iteration. Rushing to file a nonprovisional patent application on version 1 just doesn’t make financial sense if you know you are already working on version 2 that will be an improvement. But filing a provisional patent application on version 1 to lock in a priority filing date makes all the sense in the world.

You absolutely want a filing date as close to your date of invention as possible, which means filing a provisional patent application while you continue working on version next is a great way to establish priority of invention. Indeed, the only way to establish priority of invention now that the U.S. is a first to file country.

As you progress forward with your invention you learn more each step of the way.  It is best to file a patent application as soon as possible, so consider filing a provisional patent application as soon as your invention is concrete and tangible enough to describe.  Then as you make improvements you can file another provisional patent application if your want, or just move to a nonprovisional patent application. You can wrap together any number of provisional patent applications that have been filed within the last 12 months when you file your nonprovisional patent application.  Thus, provisional patent applications are absolutely ideal when you have something that could be protected now but you are continuing to work on refining, perfecting and supplementing the invention.

Another key benefit of a provisional patent application is that the Patent Office will not do anything with the provisional patent application unless and until you file a nonprovisional patent application claiming the benefit of the priority of the provisional patent application filing date. This means no more USPTO fees and no additional attorney’s fees unless and until you want to move forward with the filing of a nonprovisional patent application.

A provisional patent application allows an inventor to lay the foundation for obtaining a patent, have a “patent pending” and conserve funds in the process. In my judgment the benefits are enormous. Critical to remember, however, is that a carelessly prepared provisional is a complete waste of time and money. There is no substitute for fully and completely describing an invention in a provisional patent application.


This article is courtesy of IPWatchdog.com. It is based on a piece published on May 13, 2017 under the title “The Benefits of a Provisional Patent Application”. Link to original publication: http://www.ipwatchdog.com/2017/05/13/benefits-provisional-patent-application/id=83161.


Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn is the Founder and Editor of IPWatchdog.com, which he started in 1999. IPWatchdog.com has been recognized multiple times by the American Bar Association as a top 100 legal blog, multiple times as the top IP blog, and in 2014 was inducted into the ABA Blawg Hall of Fame.

In 2017, Mr. Quinn was recognized by IAM Magazine as one of the top IP strategists in the world.