Inventors have enjoyed the ability to file a Provisional Patent Application since June of 1995.
The United States Patent and Trade Mark Office (USPTO) created provisional patents to provide inventors with a low cost option for protecting their inventions and to give US inventors parity with foreign applicants.
This article examines the pros and cons of filing a provisional patent application and the steps needed to file one.
The Pros
Filing a provisional patents application is advantageous for the following reasons:
- Provisional patents are cheaper. A provisional patent application costs as little as $110, as opposed to the thousand dollars that a non-provisional application may ultimately cost you.
- They are easier, too. A provisional patent application does not require any formal patent claim, declaration, or disclosure statement.
- Provisional applications provide an early filing date. An early filing date will give you priority over those who file later applications for similar inventions. This will allow you time to build a working prototype and test your invention without the threat of losing your ability to receive a patent.
- Provisional patent applications allow the use of the term “Patent Pending” to discourage other inventors from copying your invention.
The Cons
Noted disadvantages of filing a provisional patent application include:
- Provisional patent applications do not become patents. If you do not apply for a non-provisional patent with 12 months of filing your application, the application will be abandoned and you will lose your filing date. In addition, if your invention has been “in use” during the 12 months, you may also lose the opportunity to ever patent your invention.
- Inaccuracies and omissions can be costly. An omission or error in your specification can result in your application being rejected or in the need to file an additional application to cover the omitted aspects of your invention.
Filing A Provisional Patent Application
Filing a provisional patent application with the USPTO is a fairly simple process and most applicants can complete the process in one day. To file a provisional patent application you need to do the following three things:
- Perform a patent search
- Prepare a description of your invention
- Fill in the required forms and file them with the USPTO
1. Performing the Patent Search
To receive a patent for your invention, it must embody an “original” idea. So in order to avoid wasting time and money attempting to patent something that is not patentable, you should first perform a patent search. A patent search examines all “prior art”. Prior art can be defined all previous development known to the public. Your search should include prior patents, patent publications and any publicly available literature regarding the sale or development of similar inventions.
At this stage, your search does not need to be very in-depth. You can easily perform a preliminary patent search via the internet. Later, prior to filing your non-provisional patent application, you can hire a professional to perform a more thorough search.
2. Prepare a Description of Your Invention
The description that you provide the USPTO must describe in detail exactly what your invention is, what it does and how to make it. Your invention must be described in such detail that any person trained in the relevant field would be able to reproduce it. This is needed to indicate exactly what it is your future patent will protect.
You must describe your invention in writing along with any drawings, figures or photographs necessary for understanding the invention. Your description must comply with all formal legal requirements and answer the following questions:
- What is your invention called?
- Was it created under a government contract?
- What are the names of the inventors?
- What does your invention do?
- What drawings, figures or photographs are included?
- What are the parts of your invention?
- How do the parts connect?
- How does the invention work?
- Are there other ways of making your invention?
- Are there any other ways of using your invention?
The answers to these questions along with any drawings, figures or photographs that you provide, constitute what is called the “specification” section of your provisional patent application. The specification of a provisional patent, while less detailed than that of a non-provisional patent, is very important. The information that it provides will become a crucial part of your non-provisional patent application, should you choose to apply.
3. Fill in the required forms and file them with the USPTO
Once your application is completed, you may file it electronically through the USPTO’s electronic file system (EFS) or via postal mail to:
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450
Either way, your application must include 1) your specification, 2) any necessary drawings, figures or photographs and 3) the appropriate filing fee. If any of these requirements are missing, you will not receive a filing date for your application.
Provisional patents offer inventors a low cost option for protecting their inventions. It also enables them to build, test and shop their invention around without the risk of having it “stolen”. More detailed instructions for filing a provisional patent application, along with the appropriate forms and specific information regarding the applicable filings fees can be found on the USPTO website.
