On March 13, 2013, the United States, under the America Invents Act, moved from a first-to-invent patent system to a first-to-file system. In other words, the first person to file a patent application will have priority over another, regardless of who was the first inventor. Clearly, now more than ever, there is a great importance in getting your patent application filed as soon as your invention is ready to be filed. A great mechanism to do this is through the use of provisional patent applications.
A provisional patent application will never mature into a patent. Instead, a follow up non-provisional patent application will need to be filed based on the provisional, or the provisional itself can be converted to a non-provisional patent application. So if you still need to file a non-provisional patent application, why bother with a provisional?
One of the biggest values in filing a provisional patent application is gaining the benefit of an earlier filing date. The provisional patent application gets your foot in the door so to speak without some of the formalities required with a non-provisional patent application. The early filing date can put you in favorable position in relation to your competitors or others in general who might be working on a similar invention.
Another reason provisional patent applications can be a good idea is due to cost. The USPTO filing fee for a provisional patent application is, if you qualify for micro-entity status, as low as $65 (versus a $400 filing fee for a non-provisional patent application). Moreover, the cost of preparation of a provisional is generally much less due to the less formal filing requirements when compared to a non-provisional. For example, a provisional application does not require patent claims.
A provisional patent application also allows you to reveal your invention to the public without fear of loss of your patent rights. Without such filing, a public disclosure can result in the loss of your patent rights in the United States. However, in some situation where a public disclosure has already been made, you may have a one-year grace period to file a patent application depending on the circumstances. Many times, the Inventor is unaware of these public disclosure limitations, and in these situations, where that one-year grace period is approaching, filing a provisional patent application may be the best choice due to time constraints. Unfortunately, public disclosures will most certainly result in the loss of your patent rights in many foreign countries.
Upon filing of the provisional application, you are also free to conduct marketing campaigns and get a sense of what the demand for your invention may be. This can also help to develop cash inflow to fund down-stream patent related costs, not to mention cash to further develop your invention. You may also, at this point label your invention as “patent pending.”
Another benefit of filing a provisional patent application is that you can combine multiple provisional into one non-provisional application. This is useful in situations where you file a first provisional application and then you subsequently develop another variation or embodiment that was not disclosed in the original. You can quickly file another provisional application to protect the new embodiment, and as long as you filed the new provisional application before the one-year filing date of the first provisional application, you can combine them into one all-encompassing non-provisional patent application.
Still, there are some important caveats here. Importantly, just because the provisional application filing requirements are less formal does not mean that the invention disclosure can be incomplete. You must completely describe your invention as it stands at the time in the provisional application. Put another way, a provisional patent application is only as good as the level of detail of the disclosure found within. A poorly written provisional application can do more harm than good.
It is also of note that a provisional patent application has a lifespan of 12 months from the filing date. In order to take advantage of the provisional application filing date, you must file a non-provisional patent application based off of the provisional application before the 12-month anniversary, after which it will become abandoned.
Whether or not you file a provisional or non-provisional patent application is up to you. As you can see, there are many benefits to in using provisional patent applications.