Do you have an invention that you are considering patenting?
You may already know that your invention is novel and non-obvious, but are you sure it’s commercially viable? Have you thought about filing a provisional patent to provide you more time to research and prepare?
Perhaps you consider it a waste of time to pursue a provisional patent, and you would rather proceed with a full utility patent application when you’re ready.
It’s important to understand the provisional patent if you want to lock in the earliest possible filing date and prevent similar inventions from beating yours to a patent. If you don’t file now, a competitor might.
Below, we’ll run through what a provisional patent is, things to be wary of, and what you should do next.
Why File a Provisional Patent?
If you’re considering filing a patent, what are the benefits of filing a provisional application first? Established in 1995, the provisional application was created to offer a lower entry cost for first patent filers.
The provisional patent application was also created to bring U.S. applicants on par with foreign applicants. A provisional filing has the added benefit of beginning the Paris Convention priority year.
Think of a provisional patent application as a placeholder that saves your filing date and provides you one year to prepare and file your utility patent application. After a provisional filing, you can display “patent pending” notices with any descriptions of your invention. You can also begin commercial promotion with better protection against infringement or theft.
You only need to pay a small filing fee to get the ball rolling with a provisional applicant and secure an original filing date. You need to establish the earliest possible filing date with your provisional patent application. This will protect your invention from any prior art that may appear for the 12 months leading up to your utility patent application filing.
The USPTO conducts a prior-art search as part of the utility patent application process. This is to establish the novel and non-obvious nature of your invention to determine patentability.
After filing a provisional application, you will have a one-year grace period in which you can also find investors for your invention. This means that you can defer a utility patent application’s greater expense until the capital is raised. You can also use this time to investigate possible sales figures and look for licensing partners.
Provisional patents aren’t examined by the United States Patent and Trademark Office (USPTO). If you decide not to file for a utility patent, your invention will remain private.
Words of Caution
Failure to file for a utility patent within the one-year timeframe may result in forfeiture of your ability to patent your invention. This applies especially if you disclose your invention by any means of publication, sale, or other public use.
Deciding between a utility patent vs. provisional patent application is easier when you know that a provisional cannot grow into a full utility patent.
One of the top patent misconceptions is thinking you can extend your provisional application. While you might be able to file another application, you will forfeit your original priority date and all the benefits that come along with it.
Most other countries also use the provisional filing date to establish the original priority date as well. This means you might need to file an international application simultaneously if you plan on selling your invention internationally.
For an international patent, you must file a non-provisional patent application within a year of a provisional filing. As long as the invention was not disclosed, in most cases, the 12-month period will reset. However, you will lose the original priority date.
What the Application Must Include
You are only protected by the original filing date if your utility patent application description matches the provisional. If they do not match, you will lose the original filing date for your utility patent application. This could mean that you lose the ability to patent your invention if a patent application for a similar invention was filed after your provisional and before your utility application.
Step 1: The provisional patent application fee is assessed annually and should be included with your filing.
Step 2: A cover sheet is also needed, which identifies the name(s) of all inventors, residence(s), and title of the invention. A few more details could also be applicable, and cover sheet forms are available from the USPTO.
Step 3: The invention disclosure on the provisional application should be as complete as possible. This is to prevent a utility patent application from losing the ability to rely on the original priority date.
Your written description needs enough detail that a person of ordinary skill in the same technological field could make and use it. A person of ordinary skill also needs to be able to recognize that the invention in the provisional patent is the same as the utility filing.
Step 4: Provisional patent filing may be done electronically or by mail.
**IMPORTANT** At least one creator from the provisional filing must be on the utility patent application. You cannot amend the provisional application after filing unless it’s to comply with regulations.
You should also note that you can’t file a provisional application for a design invention.
What You Must Do Next
After filing for a provisional patent, you must file your utility patent application within 12 months. There are only two exceptions. Within 14 months of the provisional application filing date, the benefit can be restored, or the provisional can be refiled, and the original priority date will be forfeited.
There is also a petition available that can convert the provisional into a utility patent application. Going this route means that you will affect the patent term. This is because the term of the patent is measured from the provisional application filing date, which may effectively shorten the patent term by up to 12 months.
Learn More About a Provisional Patent
We’ve shown that a provisional patent can buy you valuable time to experiment and perfect your invention while deferring cost. Don’t let a lack of knowledge cause your provisional patent to be invalid or expire and put your invention at risk.
If you’re looking for information regarding patents, we can help you. We are professionals with a knack for inventing, and we want to share our 40+ years of experience with everyone.
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