What Is A Provisional Patent Application?

A Provisional Is A Placeholder For Later Filed Regular Application

A provisional patent application is a temporary placeholder for a later filed non provisional utility patent application. A provisional includes a specification describing how to make and use a new invention, and any drawings needed. Provisional patent applications are not examined and expire after 12 months (1 year). These temporary patent applications do serve to claim a filing date for the contents of the specification and drawings. The contents of a provisional patent application are not examined or reviewed by the United States Patent and Trademark Office (USPTO) while the application is pending. Without a complete regular patent application filed within 1 year of the filing date, the provisional application expires.

Important Tip: Expired provisional patent applications are published and may become prior art for the invention disclosed in the provisional documentation filed.

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Additionally, it is important to note that when electing to pay for and file a provisional patent application, you are in fact agreeing to pay for two patent applications rather than one. Remember, a provisional application serves no invention patenting purpose if a regular non-provisional application is not filed and connected to the provisional within the year following the filing date for the provisional application.

Reasons To Apply For A Provisional Patent

Provisional applications are filed for many reasons. Most of the reasons people choose to file a provisional instead of a non-provisional, or regular, patent application involve the belief that they are cheaper, easier, and/or faster. However, most likely the only good reason is to get the earliest possible filing date.

Filing A Provisional Patent Application Is Cheaper Than Non-Provisional

Provisionals generally cost less. The USPTO filing fee is much less, and it is usually the case that provisional applications are less expensive to write and file than a non provisional for the same invention. However, it is important to stay aware of why this is true. The reason that provisionals are less expensive are all related to the simple fact that less work is required.

Less work is required for provisional applications, because they do not require claims. Not writing claims means less time is needed, less time equals less cost. However, patents are all about the claims. The claims of a regular patent application are the point to filing for patent protection. All of the other parts of a complete and proper patent application are included to provide the explanation for how to make and use the invention in the claims.

Important Tip: You can not add stuff to a later filed non-provisional regular patent application. New matter added later will get a new filing date.

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The most obvious weakness to not having the claims when the specification is filed as a provisional is that the submitted specification becomes the limiting factor for claim writing. The specification must include sufficient description to enable a person having skill in the art to make and use the invention. If, when writing the claims later, you determine that there is more description content needed in the specification to enable a person skilled in the art to make and use the invention, you cannot add new matter and a continuation in part (CIP) or a new application will be required.

It is also important to keep in mind that while a provisional may be less expensive than a non-provisional, by filing the provisional, you are agreeing to filing two patent applications not just the one. The cost of the provisional may be less, but filing a provisional implies that you will later be paying for a second patent application to actually claim the invention.

It is Easier to Write a Provisional than a Non-Provisional Application

Provisionals are easier to write and file than their non-provisional counterparts. As with the lower cost discussed above, it pays to understand why provisional applications are easier to write and file. The reason that provisionals are easier to write is that there are no claims included in provisional applications, because they are not examined.

The content and details involved in writing the claims for an invention are the most difficult and complicated parts of writing a complete and proper non-provisional application. But, because there are no claims needed for a provisional, the work of claim writing is not included in writing a provisional application. Of course, this makes writing a provisional much easier.

Not including the claim writing means that there may be issues later ensuring that the specification fully enables a person skilled in the art to make and use the invention when the claims are actually written. Any content added to a provisional specification to provide support for the later written claims will not benefit from the earlier filing date of the provisional.

It is Faster to File a Provisional than a Regular Patent Application

It is faster to write a provisional application than a non-provisional regular application, because there are no claims in a provisional. However, when it comes to the actual filing, a provisional cannot be filed much faster than a non-provisional regular patent application. How to file a provisional patent application is faster in that fewer documents and forms are required to get a filing date. But, this is really a matter of mere minutes to upload a few less documents and forms.

It is only faster to file a provisional because less work is done before filing. As with the other reasons for filing a provisional, attention should be paid to the reason that it is faster. Provisional applications do not require claims and are thus faster to write because the complexities of ensuring the claims are fully supported by the specification are not part of provisional writing.

Not including the claims does make provisional applications cheaper, easier, and faster. But, not including the claims may come with increased costs later to correct for lack of support in the specification for the claims. Adding new material later requires a CIP or new patent application, resulting in additional application filing fees as well as additional professional fees.

Getting The Earliest Filing Date – Non-Provisional Patent Application

The single, best reason to file a provisional application is when getting the earliest filing date is an issue or concern. The need to get the earliest possible filing date is usually related to known or suspect parallel development and/or research in the art combined with the belief that there is at least one other person likely to be able to claim the same, or a very similar, invention in a patent application before you. However, when others are working on the same or a similar invention, getting the earliest filing date can determine who will get a patent for the invention.

Patents are issued to the first person to file a patent application whether that is a provisional or non-provisional application. The risk of not including the claims can be overcome by writing the claims. It is frequently the case that it makes more sense to take the time needed to write the claims and file only one application instead of filing a provisional application.

It is a fairly commonly held belief that provisionals are cheaper, easier, and faster. Provisional applications typically cost less, are easier, and are faster to have written than the regular non-provisional applications. However, the reasons why provisional applications cost less need to be considered before making the decision. Carson Patents suggests you consult a patent practitioner when making the decision whether or not to file a provisional patent application for your invention instead of a regular non-provisional application. We can provide assistance for an online provisional patent application or non-provisional application.