Provisional Applications

Provisional applications are different from utility patent applications.  Provisional applications will never become patents.  They do not undergo the examination process to which utility patent applications are subjected.  Instead, provisional applications are simply filed with the United States Patent and Trademark Office and then expire 12 months later.  They are useful, however, for securing an early filing date for a follow-up patent application and preventing patent-barring disclosures from being made.

Follow-up utility patent applications must be filed during the 12-month period that the provisional is valid if the patent application is to claim the benefit of the provisional’s earlier filing date.  An earlier filing date is helpful for a number of reasons.  It limits the amount of prior art that can be used against the patent application during prosecution; only prior art that pre-dates the filing date can be introduced to defeat your patent, so an earlier filing date is generally a good thing.

If an applicant is interested in foreign patent rights, a provisional can be dangerous unless great care is taken with the applicant’s post-provisional actions.  This is so because inventors are often misled into thinking that once they have filed a provisional application, they are “patent pending” and they can begin selling their invention.  Indeed, provisionals are frequently filed in the days before a public disclosure: a researcher may be presenting the provisional’s subject matter at a conference or a company might be doing a product launch of the invention.  However, later-filed applications, if they contain material that was not included within the provisional, will not receive the benefit of the provisional’s filing date.  In the US, that generally means the new subject matter receives a different filing date.  In most foreign countries, however, where absolute novelty is a requirement, a disclosure of the invention after the provisional but before a patent application can extinguish the patent rights in that invention.

Provisional applications delay the costs of the US application process.  Provisionals are typically less expensive than utility applications.  Some applicants therefore use the one-year lifespan of the provisional to market their invention and decide whether it can be successfully commercialized.  If, at the end of the 12 months, the invention doesn’t seem to have a future, the applicant may choose to let the provisional abandon and not file a follow-on patent application, thus dedicating the invention to the public.  In such a case, filing a provisional may have been a prudent economic decision if it allowed the applicant to spend less money than it would have spent on a full utility application.  However, if the applicant decides the invention does have a market or wants to continue trying to sell it, a patent application will have to be filed.  In this situation, the overall cost will be more, because the applicant will have to pay the standard cost of the utility application but will also have borne the cost of the provisional while experimenting with the marketability of the invention.

Along these lines, while a provisional delays the costs associated with filing a utility patent application, it does not affect the one-year deadline that foreign countries have.  Generally, when a patent application is filed, you have one year during which you can file corresponding foreign applications.  Failure to file within that one-year period can eliminate your foreign patent rights.  A provisional application thus has the tendency to compress the US and foreign patent application decisions at the end of the provisional’s 12-month life.  This forces the applicant to decide not just whether to file in the US, but also whether and where to file foreign patent applications, a process involving foreign associates that can be quite expensive.

A provisional application can be an important tool in protecting an invention, but it is not without its risks.  The decisions regarding whether to file a provisional application and what actions to take (or not take) after filing should be made carefully and with the advice of counsel.  Patent attorney Tom Galvani can help sort through the issues that may be involved in a particular situation and can file provisional applications with the USPTO if one is appropriate.  Contact him at 602-281-6481.