Provisional Patent Applications: What They Are and When To Consider Filing One (Part 1)

Introduction

Many entrepreneurs and business people are familiar with patents, so you might have heard of a “provisional patent application.” However, there is a lot of natural confusion regarding what exactly it means to file a provisional patent application. This blog post series aims to clear up some of that confusion around this important part of your business’s intellectual property (IP) development. First, we will take a look at what a provisional patent application is and what it does for you. Then, in the next post, we will discuss why you should (or in a few cases shouldn’t) consider filing a provisional patent application.

What is a Provisional Patent Application?

Before proceeding with what a provisional patent application is, it is important to note what it isn’t. When you file a provisional patent application, you will not get a “provisional patent” because there is no such thing as a provisional patent. The purpose of this type of application is to serve as a marker in time,  establishing your priority as the first inventor to file for a patent application for your invention. With this important note in mind, we will now turn to a more in-depth examination of filing for a provisional patent application.

A provisional patent application is a filing that can secure an early date of priority for an invention that the inventor is still working on. As long as you file a non-provisional patent application within a year of filing the provisional application, the filing date of your provisional application will generally be considered as the filing date the United States Patent and Trademark Office uses to determine who is the rightful inventor of the invention. This is extremely important because patents are issued to the first inventor to file a patent application for an invention. 

For example, say you invented a new game for playing at the beach.  The game involves throwing certain items that can be filled with sand, so it can be easily transported, set up, or taken down.  However, you just designed the invention this past summer while you were on vacation, and you only had a chance to partially develop the game, and still need to work on which material is used to hold the beach sand.  If you file a provisional patent application now, you’d be putting a “marker in the sand” (pun intended), which would give you a year in which to file a non-provisional patent application on your invention. You would also potentially be setting the date of your invention as the filing date of the provisional patent application. 

What are the requirements for a Provisional Patent Application?

The requirements for filing a provisional patent application are significantly less stringent than the requirements for a non-provisional patent application. There are, however, a couple of important points to keep in mind when filing your provisional patent application. A provisional application should contain a description of your invention and drawings where necessary. The level of detail provided in the description should be sufficient to allow a person with ordinary skill in the same technology to make and use the invention.

Another important requirement is that the provisional application must disclose enough information about the invention that a person with ordinary skill in the same technology would understand that the invention claimed in the non-provisional patent application (filed later) is the same invention described in the provisional application. Both of these requirements are technical and complicated in nature, so it may be important to consult with an experienced patent attorney before preparing and filing a provisional patent application. 

Referring back to the beach game invention, you would want to be careful about the above requirements if the invention was incomplete at the time of filing. If you need to rely on aspects of the invention that still need to be developed (such as the sandbag material) for the non-provisional patent application, then there may be limited value in the provisional patent application. This is because you may not have disclosed enough in the provisional application about the sandbag for someone to “make and use the invention.” But this issue should be compared with the risk that someone else could disclose the other elements of your game in the meantime, if you wait to file a provisional application!  

Conclusion

There is no such thing as a provisional patent, but filing a provisional patent application can be very helpful in developing your business’s IP. A provisional patent application generally costs less than a full non-provisional application and gives you a year to further develop your invention. There are certain requirements and risks associated with the provisional patent application process and an experienced patent attorney will know how best to address these. If you would like to file a provisional patent application or have any questions about whether this option is a good fit for you, please feel free to schedule your free 15-minute initial consultation using the link below!

Written by Benjamin Rothermel and Connor Jaccard.