Provisional Patent Applications

by Ryan P. O'Connor

A U.S. provisional patent application is an effective way to establish a priority date for an invention. Advantages of first filing a provisional application include lower Patent Office fees and an extra year to assess the economic potential of the invention. There are, however, many myths associated with provisional patents, and here we shall attempt to debunk some of them.

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Myth:

A provisional patent application is not a “real” patent application.

Reality:

While a provisional application will not be formally examined by the USPTO in the year that it is pending, a provisional application is still a true application for patent. At or before the one-year due date, a provisional can be converted into a non-provisional application, or (more commonly) a full patent application can claim priority to the provisional filing.

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Myth:

A provisional patent application is cheap.

Reality:

Yes, the fees charged by the Patent Office are less for a provisional (just $150 for small entities) versus a non-provisional application (usually about $1,000). The time to prepare a provisional will, of course, depend on the desired quality. It is usually recommended that provisional applications be drafted in a similar fashion as full patent applications so that legal priority is effectively established for later claims. A provisional does not inherently give rise to a priority date for all claims in later applications; the later claims must be enabled and clearly described by the provisional application.

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Myth:

A provisional patent application never becomes public.

Reality:

This myth is common. It is true that the Patent Office will never publish a provisional patent application. But the provisional application will become publicly available. When the later non-provisional application officially publishes at 18 months from the priority date, the entire case is opened to the public (e.g., Public PAIR at www.uspto.gov). This includes priority documents, such as provisional applications. A provisional is not “forever secret” unless it is simply allowed to expire with no follow-on filings. Don’t embarrass yourself with quick provisionals thinking that nobody will ever see them!

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Myth:

A provisional patent application causes a loss of one year of patent term.

Reality:

One argument against using provisionals is that because patents are in-force for 20 years from the application date, an owner will lose a year of patent term to enforce the patent. This is not true, because the 20-year patent term is measured from the filing date of the non-provisional patent application, even when earlier priority is claimed.