A U.S. provisional patent application is a utility patent application whose filing date in the U.S. may obtain a “priority date” or “place in line” (depending upon the legal completeness of its contents) in both the U.S. and (by treaties) in most foreign countries. The maximum term of such provisional applications is one year, after which they become abandoned if not “converted” to a U.S. non-provisional application or other formal foreign application permitted by treaty.
In many, if not most, business situations, there are advantages to the client in making a provisional application the first filing(s) in invention protecting, such as:
- Non-provisional formality in drawings, claims, or text arrangement is not required (but it is permitted), so that, in many instances, a lower budget for early filing(s) is obtainable; and
- The term of patent protection is extended an extra year by the provisional year (now it is typically 20 years from the filing of the non-provisional application).
A provisional application having the full qualities of a non-provisional application (formal drawings, proper claiming, etc.) is the type of application our firm files first most of the time for our clients. Also, our firm frequently quotes two provisional filings: an immediate “emergency” filing to capture an early date and valid “patent pending” status; and then, a few weeks or months later, another “quality” filing to comply fully with legal requirements for priority-date capture.
Advantages List:
- Low cost USPTO filing fees
- Maximum adjustability to meet budget limitations
- Gives a 1-year window to allow marketing, development, fundraising, etc. before patent office examination (incurring more cost and fees)
- Gives "Patent Pending", warning off competition while establishing a presence
- Defers examination costs and fees for a year
- Effectively adds an additional year to the life of a patent
- Need not include oath or declaration
- Need not include claims
Quality Provisional includes:
- In-depth patentability analysis based on searching
- Specification
- Drawings
- Complete claim set
- All client consultations
- Filing the case with the USPTO
- All USPTO and client correspondence needed to prepare and file the application
- Tracking deadline to file a non-provisional patent application
Disadvantages:
- Cannot claim priority from any other application
- USPTO will not begin examining until converted to a non-provisional application
(can be an advantage depending on your individual circumstances).
