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All About Provisional Patent Applications
Before submitting a full utility application, a provisional application for a patent may be submitted. The history and specifications for a provisional patent application in the United States are thoroughly described in Brealant’s provisional patent section. In a word, a provisional application is an interim application that serves as a placeholder that enables an inventor to determine the invention’s filing date with the U.S. Patent and Trademark Office (the “USPTO“). The patent office never examines a provisional application. Instead, it simply fulfills this placeholder function; a utility (or “non-provisional”) application must be filed later.
Provisional applications are advantageous because a later-filed application may assert “priority” over one and use the provisional application’s filing date as its own.
For example,
1.) The non-provisional application may claim priority over the provisional application and be regarded as submitted on January 1st if a provisional application on the same invention is filed on January 1st and a non-provisional application on December 1st of the same year. Because the United States is a first-to-file country, early filing dates are crucial. The non-provisional application must be submitted within a year following the provisional application to make this claim of priority and benefit from a provisional patent application. The innovation claimed in the later-filed nonprovisional application must also be adequately described in the provisional application.
2) The provisional application is a very helpful tool for safeguarding discoveries inside the U.S. patent system, but most inventors find it a little complicated.
Provisional Patent Applications -Frequently Asked Questions
No, and yes. Twelve months after filing, all provisional patent applications get abandoned and are never reviewed by the patent office. Therefore, if a non-provisional patent application is not filed after a provisional patent application within a year, the provisional patent application will never become a patent by itself and will always be meaningless. The provisional patent application is an additional stage in the procedure and, in most situations, will raise the overall cost of acquiring a patent because the non-provisional application can be submitted directly in place of a provisional patent application.
However, it nearly always costs less to submit a provisional application on your own than to pay a patent attorney to prepare a non-provisional application for you. Therefore, completing a temporary application for less than $200 is far preferable to doing nothing if you cannot pay the $8,000 to $14,000 for a non-provisional application. Even though you will ultimately need to submit that non-provisional application, you can spend the year while the provisional application is pending developing and attempting to market your innovation. You may then employ a lawyer, knowing that the submitted provisional application may have granted you additional priority rights if it turns out during that year that your invention is highly valuable. However, you may decide that it is not worth the expense of submitting the non-provisional application if you discover within that year that your invention is not practical or that no one seems to be interested in it.
Additionally, a provisional application written by the inventor may serve as a suitable foundation for a non-provisional application. Since the inventor spent more time creating the provisional application, the patent attorney needed to spend less time (and money) developing the non-provisional application; please be aware that this is not always the case. Even when a provisional application was filed, we discovered that non-provisional applications are routinely created from scratch.
It turns out that there are many reasons:
Patent term extension: The use of the provisional application will prolong the life of any patent that is issued by that one-year window, assuming that a non-provisional patent application was submitted after the one-year window after the provisional application. This is because a patent in the United States expires twenty years from the filing date of the initial non-provisional patent application. The patent will thus expire in 2041 if the provisional application was submitted in 2020 and the non-provisional application in 2021. The resultant patent would expire in 2040 if the non-provisional application were submitted first, as opposed to 2039 if the provisional application had been submitted first.
Delaying Examination: The practice of filing a provisional patent application and then a non-provisional application one year later will postpone the patent office’s inspection by one year because the patent office never evaluates provisional patent applications. This is so that the patent office may review new patent applications to receive them within the designated art unit. Before the non-provisional is submitted, the application is not added to the queue for inspection. This is advantageous under some conditions, particularly if the inventor has good cause to delay scrutiny and a potential adverse office action. However, this is typically a disadvantage. A patent cannot issue until it has been evaluated, and until it issues, a patent is not enforceable. Delaying the issue by a year effectively means giving up the one year earned in term extension after the patent life. This is a good bargain if the patented innovation is anticipated to increase in value significantly over the next 20 years, such as a pharmaceutical product. In our experience, software innovations differ from other types of innovations in that their value is typically strongest in the near term (before technology passes the invention by. In these situations, it’s possible that the extra year of the patent term, in the end, isn’t worth the wait in the examination.
Patent Pending Status: To get a matter on file as soon as possible, the provisional filing may be swiftly drafted and submitted. When a patent application is submitted to the USPTO, the applicant has the right to declare that the goods or services it covers are “patent pending.” This is true regardless of whether the patent application was a provisional or non-provisional filing. When trying to generate interest in a startup project, sell a new product, or raise money based on the perceived worth of an I.P. portfolio, the ability to get “patent pending” status swiftly and inexpensively can be of enormous relevance.
Delay the Cost of a Non-Provisional Application: As previously mentioned, provisional applications and their submissions may be fairly affordable, especially compared to the price of submitting a non-provisional patent application. Even while we prefer to half-jokingly advise inventors that the ideal course of action is to pay a significant amount of money upfront with their patent attorney to file the greatest non-provisional application as soon as possible, we recognize that this is not always feasible. When doing nothing or waiting until funds are available to employ a patent attorney is not an option, it is always preferable for an inventor to create and submit a non-provisional patent application on their idea as soon as feasible.
Time to Investigate Value of Invention: Regrettably, most ideas created by lone inventors are not successful for the creator. The market for innovation either doesn’t exist, or the invention isn’t new. As patent attorneys, we don’t want inventors spending much money on low-value ideas with us. A provisional application can be submitted for less money upfront and provides inventors a year before a non-provisional application must be submitted. By trying to sell an innovative product or persuading investors to invest in their business, the creator might use this period to ascertain whether the innovation has value in the market. The patent attorney can then prepare the non-provisional application so that the inventor can return knowing that their money is being spent on an innovation that seems to have been worth it if they learn during that year that the invention will have some value.
File and Combine Multiple Provisional Applications: Greater protection can be obtained. At the same time, a novel invention is being developed with the possibility of filing numerous provisional applications and combining them into a single utility application.
Despite all of these justifications, most of our customers choose not to submit a temporary application. Instead, as soon as we are employed, we work on the non-provisional application. This method is typically favored since it 1) lowers process costs and 2) quickens review by the patent office.
Yes. The good news is that claims, usually the most challenging and complicated component of a patent application, are not required to be included in provisional patent applications. Furthermore, since provisional patent applications are not published or subject to examination by the patent office, there are no real issues with their formatting or organization. A provisional application must include a thorough written explanation of the invention, enough illustrations to assist readers in comprehending it, a cover page identifying the invention and its inventors, and a filing cost of around $200. The application can be submitted online utilizing the USPTO’s online filing system by uploading it as an a.pdf file.
It varies. While a provisional application only needs to provide a very basic description of the invention, this description might not be sufficient to cover all potential features or alternative implementations. Helping innovators identify the limitations of their innovation is one of the duties of a patent attorney. The lawyer will frequently help an inventor explain or even realize aspects of the invention that would not have been included in the description if it had been written only by the inventor. Additionally, before beginning a thorough draught of a patent application, most patent attorneys will have a draught of the patent claims in front of them (or at the very least in mind). This implies that even if patent claims are not necessary for a provisional patent application if a patent attorney is preparing the provisional application on your behalf, they will likely still include those claims.
However, petitioners frequently decide to file a provisional application because they cannot afford to pay an attorney to draught their application. Suppose a patent attorney is requested to create a provisional application from scratch. In that case, there will likely be little to no cost savings because lawyers frequently require that the provisional application be prepared with the same depth and thoroughness as a utility file. The need for the attorney to make sure that the provisional application fully supports the invention that will eventually be claimed in the utility filing is what is driving the desire to draught the provisional application to the same level as that of a utility filing, not a cost-inflating redundancy exercise.
We will, but it’s doubtful that you want us to. It probably won’t be significantly less expensive than a non-provisional application if you have us create a provisional application for you. This is because, as was previously said, we will want to construct the application as effectively as possible, which entails identifying the invention that will be claimed and thoroughly explaining that invention. The application can then be submitted as a provisional when you request that we do this. However, a properly written application would often bypass the provisional application and be submitted immediately as a non-provisional application.
Yes, provided that you clarify how much time we can devote to reviewing your application. On provisional patent applications that our customer wrote, we have agreed to spend a limited amount of time editing and offering suggestions. We warn our customers that the final output will not be comparable to an application we independently produced, making it more probable that the application will not completely disclose the eventual claim. Despite these restrictions, we understand that a little input on a provisional application can raise its quality without raising its cost to the same extent as a completed application. In these situations, we often ask for the capacity to spend $2,000–$3,000 of our time learning about your idea, reviewing your draught, making adjustments, and suggesting more information to be added.
Typically, no. People have been known to submit a provisional application for their invention to “shop about” for a buyer or financial assistance for future development, with no plans to submit a utility application should such expectations fall short. However, to have a chance of obtaining patent protection for the concept, you should nonetheless expect that if your invention has value, you will need to submit a utility application within a year of submitting a provisional application.
Yes, in some instances. For example, when innovative work on a product is still being completed, provisional applications might be especially helpful. Several provisional applications may be submitted each time a new accomplishment or creative piece is created. As seen in the example mentioned above, a single non-provisional patent application may be submitted within the one-year time frame and claim the benefit of all the provisional applications as long as several provisional applications are filed within that year. In this method, every innovative component is safeguarded as soon as it is created. Still, the non-provisional application’s expense is postponed till all imaginative labor is finished (or at least until the one-year deadline is reached). Without provisional applications, an inventor would have to decide between spending money on several non-provisional applications (which may add up rapidly) or postponing a patent filing for each incremental improvement (which opens the opportunity for competitors to file on the same invention during that delay period).