Provisional Patent Application

What Is A Provisional Patent Application?

A provisional patent application can be an effective tool for businesses and individuals seeking to acquire patent rights on an invention.  A provisional patent application is a legal document that when filed with the United States Patent and Trademark Office (“USPTO”) establishes an early filing date for an invention.  The invention disclosed in a provisional patent application will never mature into an issued patent or be granted patent rights unless the applicant files a non-provisional patent application claiming the benefit of the filing date of the provisional patent application within one year of the provisional patent application’s filing date. However, a provisional patent application does provide several advantages and may be a useful tool to many businesses and individuals.

What Are The Advantages Of A Provisional Patent Application?

One advantage of filing a provisional patent application is that it establishes a filing date for an invention.  An early filing date is important to an applicant because since March 16, 2013, the United States and every other country in the world operates under a first-to-file system.  A first-to-file system is a term used to describe a legal concept that defines who owns the rights to an invention. In a first-to-file system, the patent rights, and therefore right to exclude others from making, using or selling the invention, is granted to the first applicant who files a patent application for the invention.

Another advantage of filing a provisional patent application is that allows an inventor to further develop an invention given that an early filing date has been established by the provisional patent application.  In some cases, an applicant may still be tweaking certain aspects of an invention, but desires to establish an early filing date on the concepts or inventions already known.  In such a case the provisional patent application is a good option to establish an early filing date on the aspects of the invention already known.

Another advantage of filing a provisional patent application is that “patent pending” status is granted once a provisional patent application is filed.  Many businesses and inventors use the patent pending status to raise capital to fund a project, increase market awareness, ward of competitors, and market and advertise their products or services.

Another advantage of filing a provisional patent application is it allows an applicant to deal with any administrative issues.  One issue that many businesses and inventors in the New York City and Tri-State Areas have, especially universities and business with large dedicated research and development departments, is determining the inventors of an invention.  Because of the relaxed formalities of a provisional patent application, the inventors of an invention are not required to sign an oath or declaration of inventorship to file a provisional patent application with the USPTO.  As a result, in some cases an applicant will file a provisional patent application to sort out any inventorship issues.

Another advantage of filing a provisional patent application is that the cost to prepare and file a provisional patent application may be less than the cost to prepare and file a non-provisional patent application.  The cost of preparing and filing a provisional patent application is less because the USPTO filing fees and the formalities involved in preparing and filing a provisional patent application are less than those of a non-provisional patent application.  Additionally, and as a result, in many cases the amount of time a patent attorney will spend on drafting a provisional patent application is less than the time spent to draft a non-provisional patent application, which decreases leads to lower costs to the client. 

Another advantage of filing a provisional patent application is it may shift the patent term.  In the United States, the term of a utility patent is twenty years.  The term begins when the non-provisional patent application is filed and expires twenty years after the non-provisional filing date. However, the period in which a provisional patent application is pending does not count against the term of an issued patent.  As a result, filing a non-provisional patent application claiming benefit to a provisional patent application extends the term of the patent by 1 year while still enjoying the benefit of the early filing date of the provisional patent application.

What Are The Disadvantages Of A Provisional Patent Application?

One disadvantage of filing a provisional patent application is that it will delay the issuing of a patent or granting of patent rights.  A provisional patent application is never examined by anyone at the USPTO and does not mature into an issued patent unless a non-provisional patent application is filed.  As a result, examination of the patent application will be delayed and ultimately will delay the potential granting of patent rights.

Another disadvantage of filing a provisional patent application is that it accelerates the deadline for filing a foreign patent application.  A foreign patent application must be filed within one year of the earliest filing date.  If an applicant files a provisional patent application, then the applicant must be prepared to pay the costs of filing for a foreign patent within one year of filing the provisional patent application.

Another disadvantage of filing a provisional patent application is that while the formalities involved in filing a provisional patent application are somewhat relaxed, an applicant must ensure that the application adequately discloses the invention.  A provisional patent application must enable a person of ordinary skill in the art to make and use the invention for the provisional patent application to provide a claim of priority to a related non-provisional patent application.  If the provisional patent application does not adequately disclose the invention eventually claimed in the related non-provisional patent application, then the non-provisional patent application may not be afforded the priority date of the provisional patent application.  Businesses in New York and the Tri-State Areas should seek the advice of a patent attorney registered to practice by the USPTO, like the attorneys at Plus IP Firm, when preparing a provisional patent application. This will ensure that the provisional meets the requirements mentioned above.

Finally, another disadvantage of filing a provisional patent application is that the overall costs may be more expensive than if only a non-provisional patent application had been filed.  While the initial cost to file a provisional patent application may be lower, the overall cost of acquiring an issued patent may be more expensive in the long run. This is because an applicant will eventually have to file a non-provisional patent application within one year of fling the provisional patent application in order to receive a granted patent rights.

Depending on your business strategy, filing a provisional patent application may be the best option for your business.  However, in other cases it may not be the best option.  Communicating your business goals to your patent attorney will assist in determining if filing a provisional patent application is the correct approach for achieving patent protection on an invention.  Whether your business is located in New York City or beyond the Tri-State Area, the registered patent attorneys at Plus IP are available to discuss your business goals to assist you in determining if filing a provisional patent application is the best option for your business. 

 

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