Do you have an invention that you intend to patent in the future? Even though your research and product may not be fully realized, it may be beneficial to file an application for a provisional patent right now.
What is a Provisional Patent Application?
A provisional application is a form of patent application that can be used before the filing of a full utility application. A utility 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.
A provisional patent application is not checked or verified by the USPTO. Instead, it states that on a given date an inventor has demonstrated the intention of patenting 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 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 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.
Your provisional patent filing date is not valid forever, though. You must file your non-provisional patent application within one year of filing the provisional application.
Reasons to file for a non-provisional patent
As an inventor it may seem silly to file a non-provisional patent if it is not examined nor is it a true patent. While both statements are true, the decision to apply for a provisional patent depends upon so many factors. If your invention is not complete or you are low on funds, you can still receive that earliest of filing dates.
Deciding whether or not to file a non-provisional patent comes down to weighing a number of factors. Here is a list of a few additional items to consider:
- Patent term extension: Assuming that a non-provisional patent application was filed at the end of the one-year deadline after the provisional application, the use of the provisional application will extend the term of any patent that issues by that one-year period. This is because U.S. law states that a patent expires twenty years from the date on which the first non-provisional patent application was filed. So, if the provisional application was filed in 2020, and the non-provisional application were filed in 2021, the patent will expire in the year 2041. If the non-provisional application were filed directly in 2020, the resulting patent will expire in the year 2040, one year earlier than if the provisional application is filed first. In the long run, that extra year could be very beneficial at very little additional cost to you.
- Delaying Examination: Because provisional patent applications are never examined by the patent office, the process of starting with a provisional application and following it one year later with a non-provisional application will delay examination by the patent office for one year. This gives the inventor an additional year to work on the invention, do further research, and properly prepare the non-provisional application. Especially in a highly competitive industry, this additional year gives the inventor the opportunity to ensure the invention and application are perfect.
- Patent Pending Status: Filing for a provisional patent allows the invention to say “patent pending”. This may be useful when trying to sell or find financing, as described below. The addition of the “patent pending” status may also work to dissuade your competition from beginning or continuing a similar project.
- Delay the Cost of a Non-Provisional Application: Provisional applications are much cheaper than non-provisional applications. By filing a provisional application you can begin to protect your invention while securing the funds for the official non-provisional application. This time can be valuable since investors will see your invention as “patent pending”. You may have a greater ability to finance your business and application.
- Time to Investigate the Value of Invention: As an inventor you already know that not all inventions, even the most inventive, are not profitable. This additional year can offer the opportunity to protect your work while determining if it’s worth the cost to file the non-provisional patent application.
Ready to File?
Many people assume that since the provisional patent application only requires a basic description of the invention that this part can be done without the assistance of an attorney. Technically, this is true. The official application can be started on the USPTO’s website here. However, since the application requires specific and detailed descriptions of different portions of your invention, it is not always wise to attempt this alone. If you are truly concerned about competition and the filing date is of the utmost importance, this process needs to be done with care.
Utilizing an intellectual property attorney, however, can take the guesswork out of filing your non-provisional application. This will ensure it is done right and your work is safe. For instance, if a specific element or portion is not described well enough, your filing date may not matter. Additionally, there are times that it may be best to file more than one provisional patent application at the same time. There is no hard and fast rule on this as it is entirely case by case and invention by invention.
LawTrades can help
A seasoned intellectual property attorney will help to fully explain the boundaries of your invention on the application and help to ensure that it is being properly described and defended. Plus, depending on where you are with your invention, you may be ready to file for the provisional patent instead. So, whether you’re considering filing a provisional patent or you are ready to file for a non-provisional patent, we can help.