Provisional Patent Applications: What They Are and When To Consider Filing One (Part 2

Introduction

This blog post is second in a series that aims to clear up some of the confusion around provisional patent applications, a potentially important part of your business’s intellectual property (IP) development. In the first section of the series, we took a look at what a provisional patent application is and what it does for you. In this post, we will discuss why you should (or in a few cases shouldn’t) consider filing a provisional patent application.

Why Should You File a Provisional Patent Application?

There are a number of significant benefits to filing a provisional patent application. A provisional patent application allows an applicant to use the phrase “patent pending” in connection with his or her invention, for example. This can be helpful in finding investors, entering into negotiations for potential licensing deals, and deterring potential infringers.

A primary advantage of filing a provisional application is that it gives you up to a year to continue experimenting with and perfecting your invention while locking in your filing date. The non-provisional patent application (which is actually examined in the Patent Office and can lead to an issued patent) must be filed within one year of the filing date of the provisional patent application. This one-year period also gives you the time to seek investors, reach out to parties who may be interested in licensing deals, and otherwise test the commercial viability of your invention before fully committing to the vast majority of the costs associated with prosecuting a patent. Furthermore, unlike a non-provisional patent application, the contents of a provisional application are not released to the public unless you decide to proceed with the patent process.

To better demonstrate the benefits of filing a provisional patent application, we will refer again to the example from the last blog post. Say you invented a new game to play 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 other important details, such as 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 also might want to demonstrate your game at conventions, to potential customers, friends, family, or in other public venues. This year-long period from the filing of the provisional patent application to the date upon which you must file the non-provisional application gives you the time to continue experimenting with and perfecting your invention and allows you to share your idea if you choose to do so.

The main potential risks involved with filing a provisional application are that no extensions are available for the one-year period in which you must file a non-provisional application and that if your provisional application’s description of the invention does not closely match your non-provisional patent’s description you may not benefit from the provisional application’s filing date. For these reasons, you should consider whether you are likely to be able to file a non-provisional application within a year, and whether your invention is sufficiently close to what will be its final form before filing a provisional patent 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 continue 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 initial consultation using the link below!

Written by Benjamin Rothermel and Connor Jaccard.