What is a Provisional Patent Application?

A provisional patent application should be considered a temporary placeholder for an actual, non-provisional utility patent application that you are considering filing later.

In and of itself, a provisional patent application does not undergo an extensive examination process. A provisional patent application cannot result in the granting of a valuable United States Patent or provide you with any Patent rights. Once it is filed, you have one (1) year to file an actual, non-provisional utility patent application relating to the same subject matter before your provisional patent application lapses.

Although provisional patent applications don’t directly result in an issued US Patent, a provisional patent application does provide certain benefits that make them a valuable tool in pursuing patent protection.

A provisional patent application provides the means to establish an early effective filing date, while allowing you to enter the market and otherwise publicize your product or invention without losing valuable US and International patent rights. The law promotes an “Absolute Novelty” doctrine which dedicates known subject matter to the public. While the United States recognizes a grace period allowing you one year to file your patent application after publication, most countries do not. Once your invention is part of a product or service which is sold, or is otherwise made public, your future patent rights begin to disappear. The provisional patent application provides a cost effective way to preserve those rights.

The provisional patent application can also delay the costly preparation and filing of a related utility patent application until you can determine your market penetration, budget and need for patent protection. The provisional patent application is not substantively reviewed by the United States Patent Office, and does not require claims to be included, so it is usually much less costly than a related utility patent application.

Finally, the United States enacted a First to File patent system on March 16, 2013 with the America Invents Act. In a First to File system, the first person to file a patent application is entitled to the Patent Grant. The United States will no longer investigate whether you conceived of your invention before someone else did. If you want a Patent, you will be well served to file a patent application quickly, and a provisional patent application provides you an easy and cost effective vehicle for doing so.

SHERMAN IP generally provides two (2) types of services in helping you to file a provisional patent application. The first is an “AS IS” provisional patent application, and is less expensive because we are not dedicating attorney time in reviewing the quality of the information you are providing. Here, SHERMAN IP attorneys are not substantively reviewing your materials before filing, but are merely compiling, packaging and filing the information you are providing. This is as opposed to a “Section 112 Reviewed” provisional patent application where a SHERMAN IP attorney substantively reviews the materials you provide to make sure that you have provided sufficient information for us to later feel comfortable drafting the utility patent application based on a particular invention we are seeking to claim.

Information cannot be added to the provisional patent application once it is filed. When preparing your provisional patent application, include a description and supporting materials for everything that you think you might want to make part of your patent application. Don’t leave anything out! If you leave information out, then you cannot later claim priority to the provisional patent application for that information if you need to use the earlier effective filing date of the provisional patent application to preserve your rights.