Why Should I File a Provisional Application?

I’ve been getting questions about provisional applications lately, so I thought it was worth a post.  There are a number of ways in which the decision to file a provisional application is significantly different from a patent application.

First, a provisional contains no claims.  It can’t mature into a patent application.  It merely describes the invention and its boundaries.

A provisional doesn’t get examined.  When the provisional is filed with the PTO, the applicant “locks in” a filing date and can claim “Patent Pending,” but the provisional simply sits for a year.  During that year, the applicant can file a full patent application which gains the benefit of that locked-in filing date.

Because the applicant secures a filing date with the provisional, many inventors use that year to investigate whether their invention as any commercial viability.  They may seek funding for their company.  They may research the market to see how best to exploit the invention.

Applicants may choose to file a provisional for this very reason.  They might question whether their invention has any value in the marketplace and don’t want to risk the cost of a full patent application finding out the answer.  Because provisional applications are generally cheaper, this device allows them to risk less up front.

In some rare cases, an applicant may file a non-provisional and need to convert it back into a provisional application.

Of course, the provisional application is not without its drawbacks.

The provisional can be limiting, especially if it is hastily drafted.  A full patent application which depends on a filed provisional can only claim that which is disclosed in the provisional.  If a provisional application is sparse, lacks detail, or is far too specific in its detail, that will limit the content that can be claimed in the subsequent patent application.  For instance, if a provisional described a chair with four legs, the applicant could not later claim a five-legged chair or a rolling chair in the patent application. You must therefore carefully draft a provisional to describe the invention – and its permutations – as it would be described in a fully enabling patent application.

There are other reasons an applicant may choose to file a provisional, and other pitfalls that should be avoided.  There is no substitute for a qualified attorney’s advice when considering a provisional and the consequences it may have on your ability to pursue a full patent application.

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