Howard M. Cohn - Patent and Trademark Attorneys

North Coast Patent & Trademark Office - Howard M. Cohn & Associates

In recent years, inventors have turned to the provisional patent application as an inexpensive means of protecting their inventions. Sometimes this is necessitated because an upcoming product release or trade show does not allow enough time to prepare and file a regular patent application before disclosing their invention to the world. Instead, they rely on the provisional patent application to protect their invention until they have the time or money to prepare and file the more detailed utility patent application.

What the provisional patent application provides, as well as what it fails to provide, are equally important. While the provisional patent application is not as detailed nor as costly as a regular patent application, it is also not a legal instrument that can be learned in an afternoon at the library.

Improperly drafting of a provisional patent application can be more harmful than not using one at all.

The provisional application is often simpler and less detailed than the regular patent application, but then, its goals and benefits are somewhat different:

		The provisional patent application provides the inventor with the all-important priority date.
		It offers an extra year of protection (which means instead of 20 years of protection if the patent is granted, it is 21 years).
		A 12-month period to more fully develop the product is provided (vital if development includes financing of rather important functions not yet in place.)
		It doesn't require a specific format; in some cases, a design drawing and specification, a paper, or just a handwritten description along with a photograph is all that is filed.
		It is relatively inexpensive to file ( for smaller entities; for larger entities, .
		It requires far less paperwork to be filed.
		The provisional patent application is never examined by the U.S. Patent Office, as with a regular patent application. It is only reviewed for formal maters such as to be sure a check is enclosed.
		After a provisional application is filed, the invention can be disclosed or sold without fear of losing patent rights so long as a full utility patent application is filed within a year of the filing date of the provisional.

The priority date is the important feature because it establishes the date when the disclosed invention was first made practical. To rely on the priority date, within one year of filing the provisional application the inventor must file a regular patent application, basing it on the information contained in the provisional application.

What this provides is a one-year cushion. During that year, as the product or concept is further developed, additional provisional applications can be filed and relied upon for the priority date. Failure to file within one year of the original or subsequent provisional applications results in the loss of the priority date.

Because the provisional application will not be substantively examined, claims defining the scope of the invention are unnecessary. But to rely on the priority date of the provisional, the disclosed invention has to support the broadest invention that is ultimately claimed in the disclosed patent grant.

A description of the invention and supportive drawings are also part of the provisional application. A provisional application can even protect a theoretically working model that is not yet reduced to practice. Just as the filing fees are substantially reduced, so are the legal fees because far less work is involved.

Development should be continued with the goal of filing for a regular patent within one year of the priority date always foremost. And as the development continues, it's often wise to file additional, more current provisional applications. The provisional application is not a substitute for a regular patent application, which should be filed as soon as possible. We recommend that the provisional application be drafted with all the details available and then filed as soon as possible to obtain a priority date.

Read more about Provisional Patent Applications

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Provisional Patents



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