What is a Provisional Patent Application. A provisional patent application is an informal means to obtain a filing date for a "non-provisional" utility application that is filed within one year. In some instances, a provisional patent application might consist of a technical paper fully describing the invention. Once filed, the date of filing may become the "priority date" (the effective filing date) for patent protection, but only if done correctly. Thus, a provisional application is a means to get "patent pending" status on an invention up to 1 year prior to filing a regular (non-provisional) patent application. It is only useful to get the protection of its earlier filing date if a non-provisional application is filed within that year.

What do you mean "only if done correctly?" The technical description for a provisional must be "enabling" and must disclose all the components of the invention to be subsequently claimed by the non-provisional application. Otherwise, its usefulness may turn into a trap that causes a complete loss of patent rights.

Informality of a Provisional Patent Application. The requirements for filing a provisional application are informal in comparison to a "non-provisional" utility patent application. For instance, a provisional application does not require claims and may be filed with rough hand drawn drawings that would not be accepted in a non-provisional application.

Provisional Application. There are two types of provisional applications: A first type based on submission of the applicant's write-up and a second type, called a "full-scope provisional," that is prepared by the attorney in the same fashion as a non-provisional is prepared.

FIRST TYPE: A provisional application based on filing the applicant's write-up (with no substantive amendment by the attorney) is relatively inexpensive. The overall cost ranges from $1,240 to $1,680, depending on the inventor's or applicant's filing status. Within these amounts the attorney fee for a micro-entity and a small entity is $1,100; and the attorney fee for a large entity is $1400. Government filing fees are $70, $140, and $280 for a micro-entity, a small entity, and a large entity, respectively. The American Intellectual Property Law Association 2017 Report of the Economic Survey reports that the median charge for a provisional application is in a range of $4,000 to $4,500.

SECOND TYPE: A full-scope provisional application is one prepared exactly like a non-provisional application, but the government filing costs are less. For the details on a non-provisional application see https://www.lventre.com/details.html. Likely cost is based on attorney fees of $3,000 for a micro-entity and a small entity and $4,500 for a large entity, plus government filing fees of $70, $140, and $280 for a micro-entity, a small entity, and a large entity, respectively.

Non-disclosure Agreement. Using a non-disclosure agreement (NDA) to maintain secrecy about the details of your invention with any third party is recommended during the pendency of a provisional application because it enables more filing options. For example, for filing an international patent application (PCT application) within two years after the provisional in certain circumstances. Such circumstances occur when you do not need to claim the earlier provisional filing date because the invention is still new and innovative at the time of filing the non-provisional application, and when the invention was not publicly disclosed after filing the provisional, then it is possible to file a PCT application within one year after filing the non-provisional application. However, If you publicly disclosed the invention after filing the provisional, then a PCT application would have to be filed before the provisional application expires.

A public disclosure of the invention prior to the priority date of an international patent application will prevent issuance of a foreign patent or will invalidate the patent if it is issued. The filing date of the PCT application must be within a year of the earliest application to which priority is claimed. So, if the PCT application claims the filing date of the non-provisional application, any disclosure prior to that filing date would invalidate the PCT application. If the invention is not publicly disclosed during the pendency of the provisional application and the provisional filing date is not claimed as a priority date in the non-provisional, then waiting until a year after filing the non-provisional application defers the high cost of a PCT application to about 2 years from the filing date of the provisional application.

How Can a Provisional Lead to a Loss of Patent Rights?" Some care and preparation is required for a provisional application because its value may be otherwise lost and the inventor's right to a patent may be lost. Significantly, this loss of rights may not become evident until litigation seeking to enforce the patent or in licensing negotiations.

Example 1: Suppose the provisional patent does not meet the requirement of the law regarding an enabling description. Also, assume that there is a public disclosure or a public use of the invention within a year prior to filing the provisional. Finally, assume that the non-provisional application is filed within the year of filing the provisional, but more than a year after that public disclosure or use. In that situation, the right to a patent on the invention would be lost by operation of law. The non-provisional patent would not benefit from the provisional filing date because the provisional did not have an enabling description. The law precludes a patent from issuing if there has been a public disclosure or public use of the invention more than one year prior to the filing date. So, the benefit of the provisional filing date is lost and also lost is the ability of the inventor to obtain a patent on the invention.

Example 2: If an inventor is interested in patent rights outside the United States, the right to a patent in nearly all other countries is immediately lost unless a fully compliant provisional application or non-provisional utility patent application is filed before public disclosure of the invention or sale of a product incorporating the invention. If the provisional is not enabling, any public disclosure or public use prior to the filing of a non-provisional application will probably foreclose the ability to obtain foreign patent protection.

If Done Right, Is a Provisional Patent Useful?" A provisional application is useful to immediately give the prospect of future patent protection to an invention. It has the benefit of providing an extra year of patent protection for a subsequently issued patent. By filing a fully compliant provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months. This is obtained for a cost, which adds about $1,240 to the $3,860 small entity base cost of a non-provisional application using Attorney Louis Ventre, Jr.'s services. One down side is that it also postpones the opportunity for early publication of the patent application (publication starts the clock on when royalties can be sought from future infringers). See the answer to Frequently Asked Question: "Are patent applications published by the Patent Office?"

What a Provisional Application Should Have. The written description and any drawing(s) of the provisional application must adequately support the subject matter. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application. Care must be taken to include the full scope of the invention, including possible design-arounds. Additionally, the specification must disclose the manner and process of making and using the invention so as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention.

What Attorney Fees Cover for a FIRST TYPE provisional application. Attorney Louis Ventre, Jr.'s charges to prepare the submittal package. The fees for a FIRST TYPE provisional application noted above assumes that you have a complete write-up of your invention, subject to Attorney Louis Ventre, Jr.'s minor editing. The stated fee covers Attorney Louis Ventre, Jr.'s review of the write-up, minor editing to help ensure completeness, preparation of the electronic filing documents, and electronic submittal to the Patent Office. The government filing fees may be more than the stated $70, $140 or $280 if a provisional application is in excess of 100 pages.

What Is Recommended for a Provisional Application. Attorney Louis Ventre, Jr. recommends that an applicant desiring to submit a provisional application not do so with the lower fee option (FIRST TYPE) because the applicant runs a substantial risk that the submitted papers will not adequately describe the invention or likely design-around variations. If a provisional application is sought first, it is highly recommended that an applicant engage the services of Attorney Louis Ventre, Jr. to prepare a full-scope provisional (SECOND TYPE) application that has the same attention to detail of the invention as would be given a non-provisional application.

This approach substantially improves the likelihood that the application will have value in a later filed non-provisional application.

How Long is A Provisional Kept by the Patent Office? A provisional application is retained by the U.S. Patent and Trademark Office (USPTO) for at least 21 years.

Additional Information. Additional information is also available on non-provisional utility patents, design patents, and plant patents.

This file last modified 05/19/20.
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