When is a Provisional Patent Application the Best Option?

Provisional patent applications provide a simpler, lower-cost option for inventors to establish an early official filing date without undergoing the full patent process immediately. This type of patent application allows an inventor to designate their invention as "patent pending" while they get their ducks in a row. A provisional patent application is not required to meet many of the stringent requirements of a true patent application and is thus less time-consuming to prepare. To ultimately obtain a patent, the inventor must follow up the provisional application filing within 12 months with filing a full utility patent called a non-provisional patent application.

What are the circumstances where an inventor should consider first filing a provisional patent application?

1. Time is of the Essence

U.S. inventors are required to file a patent application within 12 months of the occurrence of certain activities. These are public use, public disclosure, and offer for sale of the invention. For most foreign countries that require "absolute novelty," i.e., the absence of the 12-month grace period, any of these activities would result in the immediate bar to patent protection. Therefore, if an inventor contemplates public disclosure (e.g, presenting a research paper at a conference), public use (e.g., demonstrating the use of the invention), or offer for sale (e.g., meeting with a potential customer), a provisional patent application should be filed as soon as possible to avoid the loss of important patent rights.

2. Broad Inventive Concepts

An inventor may have some rough broad concepts about an invention with much of the details not yet fleshed out. However, they may want to go ahead and get a provisional patent application on file sooner rather than later because they want to be able to talk to various outsiders who may be able to help them realize their vision.

3. Lack of Funding

Because the attorney fees, professional drawing fees, and official filing fees associated with a non-provisional patent application fall in the range of $8,000-$12,000, some inventors want to have more time to gather resources to fund the patent activity and other needs associated with implementing the invention to achieve commercialization. Because provisional applications generally cost much less to file, it is a good initial option for the inventor.

Conclusion

A provisional patent application allows an inventor to get their foot in the door at the Patent Office to achieve patent-pending status. They have a maximum 12 months to fully flesh out the invention, build a prototype, obtain proof of concept, evaluate feasibility, and test the market. However, the non-provisional patent application should be filed as soon as practicable so that it can get in the queue for examination on its path to patent grant.

Got a question about patents? Email me at wjeang@fultonjeang.com.