How to decide if you should file a Provisional Patent Application or a Non-provisional Patent Application

In 1995, the United States Patent and Trademark Office (USPTO) offered a new kind of patent application designed to provide a lower-cost first patent filing in the United States and to remove a loop-hole where foreign applicants received some advantages that US applicants did not receive.

Since then, the provisional has become a popular first filing for many inventors and companies. Used properly, it can provide some great advantages.  There are also some critical shortcomings that you need to be aware of when filing the provisional.

Most people call it a “provisional.”  I will sometimes write PROV for short and some people call it a “PPA.”  It is a kind of “utility patent application” except that it only lasts for 12 months from your filing date.  It does not, by itself, result in a patent registration, but instead it preserves your right to get a patent on the material described in the application.  The normal kind of application is called a “non-provisional” or an NP for short and the non-provisional must be filed within 12 months of filing the provisional (and properly claim priority to it) otherwise you lose the benefit of the provisional.  The non-provisional patent application is what must be filed to eventually get the patent registration.

Some benefits of a provisional:
  • Faster to prepare and file
  • Fewer technical/clerical/filing requirements
  • Lower cost to prepare and to file
  • No limits on the number of inventions that a provisional patent application can describe
  • It can extend the total time of “patent pending” plus “patent registered” by the delay between filing the provisional and the non-provisional application
Some drawbacks of a provisional:
  • You cannot receive a patent registration just from filing the provisional
  • Lengthens the time it takes to receive the registration on the subsequently filed non-provisional by about the delay between the two filings
  • The deadline to file your non-provisional application is the same deadline to file foreign patent applications so those costs are stacked
  • Increases the file history of the application which is where opposing attorneys look for ways to get around the patent
  • You must still satisfy the written description requirement, the enablement requirement and the doctrine of equivalents in your specification, even though it is not examined by the Office
It may be worth considering filing a provisional patent application if any of the following are true:
  • You are short on money but expect to be able to raise more money within a year
  • You are short on time (i.e. you need to file the application quickly)
  • You are short on commitment to the invention and plan to do the research it takes to decide if you really want to commit resources to the idea
  • You want to maximize the number of years of protection even if that means delaying getting the patent registration

Plan on spending around half to a third the cost of a normal patent application on your typical provisional patent application.  Also, depending on how they are prepared, it may take anywhere from a week to two months to prepare the application.

Some people prepare and file their own provisional patent applications.  The filing process is very simple, but it is easy to make serious mistakes in your description that can later ruin your patent.  Be sure to get help or do a ton of reading on how to do it right.  Understand that mistakes you make may have consequences for you 10-15 years from now.

Common mistakes include:
  • not describing something in enough detail to be enabling,
  • describing in too much detail so you are limited to only what you described,
  • using legal patent terms like “can” “may” “must” “should” “is” “includes” “end” “edge” and etc. in the wrong way,
  • failing to describe enough variations of one or more aspects of your idea, and
  • focusing on the benefits instead of the structure/function that provides the benefits.

Jason Webb, Webb IP Law Group, https://jpwebb.us/

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