Provisional Patent Application
PROVISIONAL PATENT APPLICATION PROCESS AND COSTS
In my post How to Apply for a Patent in the US, I lay out the steps to getting a patent. The fourth step is to file a provisional patent application. I’ll go into a bit more detail on that step here. This post describes what a provisional patent is, what needs to be included, and my recommendations to inventors if they decide to file one.
What is a provisional patent?
Once an inventor has decided on moving forward with a patent, the provisional patent application is usually the first step in the process. A provisional patent application is essentially a placeholder. A provisional patent application has the effect of declaring that you possessed certain information about your invention on a certain date (the filing date). You do not acquire any property rights by filing a provisional patent application. You don’t own anything yet, but you establish what you have invented and when. You do this by describing your invention, the intellectual property, very thoroughly.
An ideal provisional patent application will be an extremely thorough disclosure of everything about the invention. It describes how to make it, how to use it, what the best version of the invention is, what all the possible variations of the invention include, and it should even attempt to describe yet-to-be discovered or realized embodiments and uses of your invention. Wording is critical. You want to describe the invention broadly- as broad as possible. Your provisional patent application is the foundation for everything that you later claim ownership over. So if there is something that is not described in the provisional patent, then it cannot make its way into the actual patent. For this reason, it is also important to be very specific about the invention. The written description needs to be both deep and broad to ensure that you can claim as much IP as possible.
In the US, there are literally no rules that govern to content of a provisional patent application. Provisional patent applications are not examined by the patent office until a later associated nonprovisional patent application is filed, so the specific form of a provisional patent application is quite flexible. Patents are not technically required to have drawings, but as a practical matter, they must include them, even for things that do not necessarily lend themselves to pictorial description, such as software or algorithms. If statutory bars are threatening, people have been known to just file whatever they have on hand about their invention. This may be a Ph.D. dissertation, or it may just be a stack of sketches that the inventor drew up in his shop. Like I said, there are not really rules about the contents of a provisional other than that you can only rely on the contents of the provisional patent application when you file your nonprovisional application.
Why file a provisional patent application?
The benefit of filing a provisional patent application first is that it defers a significant portion of the cost of the patent process. After you file a provisional patent application, you have a year in which to file a nonprovisional patent application that refers back to or “claims priority” from the provisional application. That year can be extremely valuable to inventors who have not yet had the chance to explore the commercial viability of their invention. Once you have filed a provisional patent application, you can move forward with marketing and manufacturing efforts with the assurance that if you so choose, you will at the very least be able to apply for nonprovisional patent.
The other benefit of the provisional patent is that it preserves an inventor’s right to file for a patent later. As previously mentioned, the US has a one-year grace period after the first public disclosure before losing all rights to a patent. Unfortunately, inventors are no longer assured of having a full year. The US uses a first-to-file system, just like every other country in the world. This was not always the case: until 2013 the US had a first-to-invent system. In fact, the US was the last country to use such a system. The defining feature of the system was that if you were the first to invent a technology and you abided all of the other patent requirements of novelty and non obviousness, you were entitled to a patent. It was a very fair system and it gave good and just results. Unfortunately, another characteristic of such a system is that it is extremely burdensome and costly to administer, for both the government and the patent applicants. A procedure known as an “interference” was common. Interferences existed to determine who in-fact invented the technology first. There were related rules, such as continuous and reasonable diligence in reduction-to-practice after conception that could be very difficult to prove and were far from clear-cut. There was a lot of litigation in the prior system, and it was costly. There was significant litigation in the first-to-invent system, which was a burden on the court system, but also a very significant cost for inventors. Inventors could almost never rest assured that they would not have to defend their patent against a claim that someone else invented it first. It was the major flaw with the old law.
The first-to-file system, on the other hand, provides that only the first application filed is eligible for a patent. There is no longer any litigation over who invented something first. Only the first person to file can get a patent. Under the old system, if you invented something, you had a year before you had to file. Now, if you invent something, you have a year unless someone else files first. You probably have a year, but it is far from guaranteed.
It helps to have a practical example for this concept. Say inventor Alice first publishes about her an invention on the first day of year one. She should have until the first day of year two before she loses her right to a patent. Under the previous system she definitely would have the full year. However, under the new US system, if Bob creates the same invention during year one and files before Alice manages to, then neither of them get a patent. Alice was not the first to file, and Bob was not the true inventor (only the very first person to invent is a true inventor according to the USPTO). It is not as fair, but it is a lot cheaper, easier, and more definite to administer.
In summary, a provisional application is a great tool to use to establish yourself as the inventor, even if you are not yet ready to file a full formal patent application.
How do I file a provisional patent application?
A final point regarding provisional applications has to do with whether inventors can or should do it themselves. Inventors frequently take a DIY approach to life. I am often guilty of the same. There are a number of books and services that will assist inventors to file their own provisional patent applications. I do not recommend this course of action. The reason being that a good provisional can generally be incorporated wholesale as the specification of a nonprovisional application. The nonprovisional application will require the thorough and technically written disclosure anyways, so it is good to invest in having a professional patent attorney draft the provisional disclosure just in order to ensure that you are disclosing as much intellectual property as possible that you may later claim it in your nonprovisional. A DIY provisional application will probably not be sufficient to file in a formal nonprovisional application, and therefore, a lawyer will have to draft the nonprovisional specification at one point or another.
In short, the DIY approach is unlikely to yield a savings, and will at best just defer legal costs for a year. The downside to DIY is that inventors risk filing an insufficient or incomplete provisional application. The DIY approach does not generally save money, but it does risk leaving IP rights on the table.
How much does a provisional patent application cost?
Provisional patent applications typically cost about a third of the total price of the full patent application. I post a price list that details my fees, but in general, a good provisional patent application for a very simple invention can cost under $2000. A very complex invention may cost double that. Obviously, attorney fees vary from attorney to attorney, and some attorneys charge much more than these guidelines, but a quality provisional patent application should cost between $2000 and $4000.
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