Should I File a Provisional Patent Application?

Patenting an invention in the United States under the America Invents Act is all about when you file your patent application, because your filing date marks when you sought protection for your invention. A provisional patent application is a tool which inventors can use to secure a filing date by filing an abbreviated version of their invention disclosure. An inventor will get to keep their provisional filing date so long as the full, non-provisional patent application is filed within one year of the provisional application filing date.

A provisional patent application is accorded patent pending status during the one-year time period after the patent is filed.  It gives the inventor many strategic benefits, as we describe in more detail below.  However, if the applicant’s invention is copied while the patent application is still pending, the applicant cannot sue for infringement.  Nevertheless, if a patent ultimately does issue for the invention, the inventor’s patent rights will generally extend back to the provisional filing date.

What Are the Benefits of A Provisional Patent Application?

A provisional patent application can provide inventors with a lot of benefit. For starters, if you are selling your product or planning on selling or pitching your product to potential investors, you can put a label on the product/your invention that says “patent pending,” a claim which can prompt an increase in sales. The “patent pending” label tells buyers and investors that you are serious about the value of your invention – so much so that you think the intellectual property rights are worth protecting.

Also, a provisional application is a more affordable way to preserve your filing date, but still get additional time to prepare, develop, or refine your invention. The fee associated with a provisional application filing is significantly less than the fee for filing a nonprovisional application. While you ultimately will have to pay the non-provisional fee if you truly want to obtain patent protection, securing a provisional filing date can give you up to an additional year to come up with those fees. Many inventors get a provisional patent application, and then pitch their ideas to prospective buyers and investors.

Additionally, even if your patent application is not fully complete and ready for filing (maybe you want to do more testing, or haven’t quite got the funds together to pay for a non-provisional application), you can submit at the bare minimum your invention disclosure (i.e., the specification that lays out the parts of the invention and how those parts interact and operate), and any drawings of the invention that are necessary to facilitate the understanding of the invention. A provisional application does not require a discussion of the prior art in the relevant field of invention, nor does it require claims be submitted at the provisional filing date. This means that you, your patent agent, or your attorney can take some additional time to draft well-crafted claims that really capture the scope of your invention.

If you have questions concerning the filing of a provisional patent application, do not hesitate to contact Parsons & Goltry at patentsavers.com, or by calling 480-991-3435.