Whether you already have inventory on the shelves, or a functioning prototype, or even just an idea; you are here because you have created an invention that you know is unique and needs protecting. For most inventions, protection within the United States begins with a provisional patent application. Submitting this application starts an immediate 12 month clock where your invention is protected. Use this time to complete your invention, the non-provisional patent application, and secure the funds for the official filing.
The provisional patent application can be submitted online and is relatively inexpensive compared to the costs of filing your non-provisional patent application. However, this does not mean that the process should be taken lightly. If challenged, your invention is only protected during this 12 month period if the descriptions and claims listed in both applications match.
Don’t worry. We’ll guide you through the process. Below you will find an easy guide walking you through the provisional patent application.
What is a provisional patent application?
A provisional application is a form of product patent application. Use this before the filing the full utility patent application.
A utility or product patent is a patent that covers the creation of a new or improved—and useful—product, process, or machine. The provisional application acts as a placeholder with the US Patent and Trademark Office – USPTO. This placeholder establishes the filing date of your invention.
Why Use a Provisional Patent?
The USPTO does not check or even verify a provisional patent application. Instead, it states that on a given date an inventor has demonstrated the intention of placing a product patent on said invention. This is beneficial to show that you are the first person to attempt to patent this idea if another similar patent is filed before you are ready to file your official non-provisional product patent application. In the US this is vital because we follow the first to file philosophy. So, even if you’ve been working for years, you are out of luck if you were not the first one to file a product patent on this particular invention – and the provisional patent application helps here. The earliest of filing dates prevents your competition from beating you to the punch.
What Protection Does It Provide?
Remember that a provisional patent application is not to be confused for an actual non-provisional patent. It will ultimately offer no protection unless a utility patent application is filed and granted by the USPTO.
Once the application is filed and paid, protection begins. During this time your patent is protected. As long as you follow the provisional patent application with the non-provisional application this protection will continue. Also, if you fail to file a non-provisional application timely you lose all protections. You will lose all claims to your earlier filing date.
If you follow the process precisely then you will have protection from the submission date all the way to the amount of time it takes for the USPTO to examine your non-provisional application. An applicant may also use the term “patent pending” on the invention and in marketing materials during this time.
The Steps Required for Filing Your Provisional Patent Application
Your application should include:
- A cover sheet which must include information such as the name(s) of all inventors, addresses, title of the invention, and any applicable attorney information
- A detailed description of how to build and use your product
- Drawings of your invention
- The required fees.
File your provisional patent applications by mail or online. The online application system can be found here.
Things to Remember when filing a Provisional Patent Application
The emphasis on provisional patents typically comes from the early filing date and getting “patent pending” status. However, rushing through the application simply to establish those items may really hurt you in the long run.
- If challenged, the earlier filing date will only count if your provisional patent application truly describes and matches the same invention in the non-provisional patent application.
- Your patent will only cover the ways and different manners of use that you describe in your provisional patent application. What that means is if another company or person comes up with a new way to use your invention – and it is a use that you did not discuss – they will be safe to profit off of your invention.
- An applicant may file for more than one provisional patent application if it’s not perfect or does not accurately describe your invention, however you will be responsible for paying the filing fees each time and only the earliest application with the proper description’s filing date will count.
The Detailed Description Section
Many applicants want to err on the side of caution and include few details with their provisional patent applications. It may be natural to want to protect your invention. What if you can’t meet the deadline? Or, what if another inventor copies me? Remember that provisional patent applications are private. Even once a patent has been granted these applications are typically not made public. There are only very rare exceptions to this rule.
Since you no longer fear copycats, it is in an applicant’s best interest to be as detailed as possible with the description on your provisional patent application. If it is a machine, describe all the parts. If it is a process, share every step. Be as specific as possible. You will also refer to your drawings in this section.
The more information you share, the easier it will be to complete a non-provisional patent application.
The Patent Search
The USPTO requires that a provisional patent application include comparisons to the prior art of other patented inventions to prove that yours is unique. This is the section that requires some homework. You or your attorney can do this work. The descriptions of the distinctive features of your invention, known as claims, will be used by your patent examiner at the USPTO to determine if your invention is truly new and patentable.
Conduct a patent search to find the requisite prior art. There are a variety of tools, some free and some paid, that will allow you to search for patents internationally. The USPTO, Google, and the World Intellectual Property Organization (“WIPO”) have well-known systems. Another advantage to researching the prior art and patents is that they can be used as a template for your patent application. Different industries may have different standards for their provisional patent applications.
For a full rundown of the different patent search tools, please check out our article: Best Tools for a Patent Search.
Provisional Patent Application Sample
- Title: Short and sweet is the name of the game here. Try not to go any longer than 15 words and try to come up with a phrase that would be searchable for someone in the future doing their prior art patent search.
- References: This is the first time your patent search comes into play. Here you will list the other inventions that are like yours. Use this space to show how and why your invention is different/better/unique from the others you have listed.
- Abstract: Provide a short description of your invention. You do not need to include much detail.
- Field of Invention: The USPTO uses the technical field of your invention to properly categorize it.
- Background Information: This is the place to show why your invention matters. What does your invention accomplish that was difficult to do before? What life problem led to your invention?
- Summary of your invention: Share what your invention does and how it works.
- Drawings: This is where you will add any drawings or figures that relate or better describe your invention. Label these Fig. 1, Fig. 2, etc. Include a short explanation with each figure.
- Detailed Description of your Invention: This is the section to go into the greatest detail. Be as thorough as possible. Utilize all of the information that you collected to write a succinct but detailed description. So, please use all of the information collected and learned from above in order to be as thorough as possible. The detail here will help to ensure that your invention, or an aspect of it, is not copied by anyone else.
- Examples of how your invention will be used: You can list as many examples here as are relevant to your invention.
- Claims: You’ll include the claims of your invention toward the end of your application. These define your invention, what it is, and what it does in fairly simple terms. The claims listed decide how patent law protects your invention.
How Do I Know It’s Right?
Your provisional patent application may not look exactly like the example here, and that is fine. Your best bet is to find examples of other related patents in your field. It’s alright to use these as examples.
It’s very important to submit a thorough provisional patent application. Don’t let a poorly done or incomplete application create problems for you later. If not done well, the provisional patent application can be used against you. A competitor may use this to show that your invention wasn’t complete and hadn’t moved past the idea stage. Not only can a bad provisional patent application impact the effective date of your patent but it can cause you to lose a patent altogether.
LawTrades Can Help
Your focus is on your invention and rightfully so. Let a seasoned patent attorney conduct the patent search and ensure that your provisional patent application is filed correctly the first time.