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FAQs About Patenting Your Invention – Provisional Applications

by | Dec 17, 2019 | Intellectual Property

This is one of several blogs about patenting an invention.

  1. What is a provisional patent application?

A provisional patent application is an optional first step in the process of getting a patent. It is not a real patent application. It is only a temporary placeholder that provides evidence that you had conceived of your invention when you filed the provisional application.

A provisional patent application is valid for one year. Within that year, if you file a full-blown, formal, non-provisional patent application that points back to your provisional application, the PTO will consider the filing date of your formal non-provisional application to be the earlier date that you filed your provisional application. That earlier filing date can be very helpful later.

  1. Why should I file a provisional application?

First, it buys you time. You get the benefit of an earlier filing date, but you also get to wait one year to convert your provisional application into a non-provisional application. You can use the one-year delay to obtain additional funding for your invention.

Second, it can delay your cost. A provisional application does not have to conform to all the PTO’s filing requirements. This means you probably do not need to spend a lot of money on a patent attorney to file one. (But you should involve a patent attorney. More about this later.)

Third, you get to say your invention is “Patent Pending.”

  1. How much does a provisional patent application cost?

For a small entity, the PTO will charge about $200 to file a provisional application. If you have described your invention with enough detail that one of “ordinary skill in the art” will be able to make and use every feature of your invention, then a patent attorney will likely charge around $2,000 to review and file a provisional application. If it turns out that the description of your invention is not detailed enough, or if it doesn’t explain your invention well enough, a patent attorney may charge additional fees to bring your written description up to par. How much the patent attorney charges will depend entirely on the nature of your invention and the quality of your own written description. Before you file a provisional application, it always makes good sense to ask a patent attorney to review it.

  1. What do I put in a provisional patent application?

A provisional application does not have to conform to all the formal PTO filing requirements that apply to a full patent application. However, to obtain the benefit of a provisional application, it must describe everything about your invention. Technical detail is important! You should describe your invention in enough detail that someone of “ordinary skill in the art,” after reading your application, will be able both to make and use your invention without any need to experiment. It is your responsibility to satisfy this requirement. No one is going to examine your provisional application and tell you it is deficient. But if you fail to describe your invention with enough detail, or if you must add detail later when you file the full non-provisional application, you can lose the benefit of your provisional filing date. Losing your provisional filing date might not be fatal, but it is not helpful. If you decide to file a provisional patent application, you should make sure to describe your invention in as much detail as you can. You can use hand drawings, photographs, lab notes, sketches, presentation slides, computer code, whatever makes sense. The format is not too important. The content is important. Do not cut corners on your technical description!

  1. What is a non-provisional patent application?

A non-provisional application is one that will be examined by the Patent Office. You must file a non-provisional application within one year of filing a provisional application or you lose the right to claim priority back to the provisional application.

A non-provisional application should always be prepared by or with the help of a patent attorney or patent agent. It includes a written description of your invention, formal drawings that comply with the PTO’s rules, and a set of claims.

  1. How do I reference a provisional application when I file a non-provisional application?

Your provisional application will be assigned a number when you file it. When you file your non-provisional application, you just reference the number of the provisional application, like this: “This application claims priority under 35 U.S.C. § 119(e) to United States Provisional Patent Application No. 60/999,888, entitled ‘System for My Invention,’ filed October 14, 2016.” You also include similar information in a form you file out when you file the non-provisional application.

  1. What if I add new ideas to my non-provisional application?

The Figure below illustrates a problem that can arise if you add new material to a non-provisional application.

Let’s assume you filed a provisional application on January 1, 2015. Then on December 30, 2015, you filed a non-provisional application that contained some new matter (shown in orange above). Let’s say claim 4 references the new matter. In this example, claim 4 will have an “effective” filing date of December 30, 2015, almost one year later than claims 1 and 2. Claims 1 and 2 will enjoy an earlier filing date of January 1, 2015 because the subject matter of those claims was discussed in detail in the provisional application.

An earlier filing date is important because it locks out intervening inventions. In my example, any other inventions published between January 1, 2015 and December 30, 2015 can be used to reject claim 4.

  1. Do I need claims in a provisional application?

No. A provisional application does not require claims. However, the process of drafting claims can be an extremely useful exercise to focus your mind on the aspects of your invention that you might want to describe more fully.

  1. When should I file a provisional application?

This is not an easy question to answer, so it is best to discuss this subject with your patent attorney. Generally, however, it is a good idea to file some kind of patent application before you disclose your invention in public. “Disclosing your invention in public” means pretty much what you would expect: taking an action that informs someone outside of your private circle about your invention. This includes talking about your invention at a conference, publishing a paper about your invention, and selling a product that includes your invention. Before you do any of those things, you should seriously consider filing some kind of patent application.

  1. What do I do after I file my provisional application?

A provisional application holds your place in line for one year. Within one year, you must file a non-provisional application based on your provisional application. Otherwise you lose your place in line, as if you never filed your provisional application in the first place.

  1. Can I file more than one provisional application for the same invention?

Yes. You can file as many provisional applications as you like. Each one can include new material that you only recently thought of. When you eventually file your non-provisional application, you should reference all the provisional applications you filed earlier.

  1. Is a provisional application kept private?

Generally, yes, until you file a non-provisional application that references the provisional application.

Clyde Findley is Special Counsel in the Intellectual Property practice at Berenzweig Leonard. He can be reached [email protected].