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Should you file a Provisional Patent Application?

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The US Patent and Trademark Office (USPTO) offers several types of patents. The most common are Utility Patents, Design Patents, and Plant Patents. Utility Patents are 90% of all the patents filed. A utility patent “protects the utility or functional aspects of an invention. Although the definitions are broad, utility patents cover machines, processes, methods, compositions and anything manufactured that has a useful and specific function.” 1

There are also provisional and non-provisional patent applications available.  The Provisional Patent Application has been available to inventors since June 8, 1995. “A provisional application provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term "Patent Pending" to be applied in connection with the description of the invention.”2

The most important value of a provisional patent application is to protect your patent rights from being lost due to public disclosure or offering for sale. If your invention is publicly disclosed, or you offer it for sale without filing any  kind of provisional application, you lose all patent rights to your invention and it becomes part of the public domain.

While provisional patent applications have value, it’s not always that obvious.

  1. A provisional patent application gives the applicant a priority filing date, and one additional year to file a utility patent application. It is not a substitute for a regular patent application.
    1. If you do not file a non-provisional patent application within one year after the provisional patent application is filed, the provisional application expires and you lose the one year filing extension that it bought you to file the regular patent application.
    2. You can use that time to develop and promote your invention, but you must still file a non-provisional application before the expiration date of the provisional patent application. A provisional patent application is filed but not examined by the patent office. 
    3. That means no one will look at your provisional application. It will simply sit on the shelf until such time as a non-provisional application is filed.
    4. The provisional patent application is removed from the shelf and compared to the non-provisional application. Any material which is in both applications gets the earlier date of the provisional application.

So what should be included in a provisional application?  

  • The body of the provisional application should contain everything you want included in the non-provisional patent application. If you do this correctly, most of the information you want included in the non-provisional application will get the priority date of when the provisional patent is filed.
  • Because a provisional patent is not published by the USPTO, you can resubmit another provisional application once the original expires. What you have lost by doing this is the priority date. Anyone who happens to file on an invention similar to yours, during the year your provisional patent application was in force, is now priority art.

This loss of a year can be used against your patent application. For this reason, we recommend anyone contemplating this strategy to do a patent search (for patents filed in the patent classes into which your invention falls) for the year that has just been lost due to the provisional patent application’s expiration.


About the Author:

Richard Blazey is the Managing Member of Business Metamorphosis LLC, www.bllc.net. They help businesses get, manage, and profit from their investments in intellectual property. You can reach Richard at rblazey@businessmetamorphosis.com or (585) 520-3539.

1 http://www.jacksonwhitelaw.com/ip/three-types-of-patents-issued-united-states/

  1. https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent
Posted in: Inventions
Tagged: Design Patents, patent application, The US Patent and Trademark Office, Utility Patents