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Provisional Patent Applications: The Good, The Bad, and The Ugly

By Andrew

On 01, Jun 2013 | In | By Andrew

Provisional Patent Applications: The Good, The Bad, and The Ugly

I’ve always been surprised by the number of potential clients who ask specifically about provisional patent applications. Since their introduction in 1995, provisional applications seem to have achieved a sort of “rock star” status – or, at least, more public awareness than most other aspects of the patent process.

A provisional application is a “simpler” patent application. It does not require a signed oath or declaration from the inventors, and it does not require the legalistic patent claims that define the scope of the invention in a regular patent application. The paperwork for filing one is also simpler. However, provisional applications do still require a complete and thorough description of the invention and, in most cases, drawings or illustrations are also required.

Once they’re filed, provisional patent applications stay pending for one year before they expire. They are not examined for patentability, and do not directly mature into patents. If an inventor wishes to continue pursuing patent protection, a regular U.S. and/or PCT international patent application must be filed by the end of the one-year pendency of the provisional application.

So why are provisional applications so useful? They allow an inventor to get a filing date for his or her invention and then spend a year perfecting the details of the invention, scoping out the commercial viability, and doing anything else that might be required before a regular and/or international patent application (with a higher filing fee and more formal requirements) must be filed. Thus, they’re the right step for an invention that is ready for patenting but not quite ready for market, or in situations where it’s necessary to file a patent application quickly to avoid loss of patent rights. I begin the patent process by filing a provisional patent application for many of my clients.

Here’s the downside: provisional applications are only as good as the disclosure that they contain. If a provisional application does not contain a complete disclosure of the invention, it’s of little use. Some people have been lulled into thinking that because provisional applications do not require claims or a declaration, anything goes. That’s simply not true – and the bigger problem is that an unwitting inventor may not learn that his or her provisional application was inadequate until years later, when he or she steps into a court and tries to enforce a patent.

So what are the best practices? Here are a few:

  • File as complete a provisional application as circumstances allow as early as possible, preferably before any public disclosure of the invention. Ideally, pretend the provisional application is a regular application and write it that way.
  • When disclosing and marketing the invention after filing a provisional application, don’t disclose features that were not described in the provisional application.
  • Consider filing multiple provisional applications as you develop the invention and add new features. If multiple provisionals are filed, file a regular U.S. and/or international application by the expiration date of the first provisional application.