An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
Provisional patent applications are confusing. They don’t mature into patents. But they kind of do. The US Patent and Trademark Office doesn’t review them like they do a nonprovisional patent application. But they still must meet strict legal requirements or they are useless. And the name itself is confusing because the “real” patent application that matures into a patent—the nonprovisional application—is named with a negative prefix of the provisional.
While I can’t defend the poor naming of the nonprovisional, I can take a shot at explaining what a provisional patent application is.
What is a provisional patent application? A provisional patent application is a placeholder application. It establishes a filing date for your patent application and if you file a nonprovisional patent application within one year of filing the provisional, it secures a filing date for your invention.
Provisional patent applications DO:
- Give you the right to use the term PATENT PENDING. This has marketing advantages and puts competitors—large or small—on notice that you are seeking protection for your invention.
- Secure your application’s filing date for purposes of the first inventor to file rule. This is increasingly important because the United States grants patents to the first inventor to file, so getting your application on file is critical—the last thing you want is for someone to come up with your idea later than you and beat you to a patent because they filed first. (Dan Lievens at 3DL Business Studio wrote a blog post on this topic that summarizes the first to invent issue well.)
- Establish a filing date for the purposes of prior art that will be cited in the US and international patent offices. The provisional application’s filing date is the date from which the US Patent and Trademark Office measures whether references can be cited as prior art, that is, whether a reference can be used to argue your application is not novel or non-obvious.
- Give you time to market your invention, test the market, raise money, contact manufacturers, and build your business. The catch is that once you file the provisional application, you start a one year clock ticking until you must file your nonprovisional application or you lose your filing date.
- Keep your invention secret, if you want. Your provisional patent application is kept confidential in the US Patent and Trademark Office until any nonprovisional patent application publishes or until any eventual patent issues. Thus, if secrecy is your goal at the moment, you can file the provisional application and continue to keep your invention secret.
Provisional patent applications DO NOT:
- Give you the right to exclude others from making, using, or selling any product. The provisional application grants no right to exclude and there is no such thing as infringing a provisional patent application. Only a patent grants a right to exclude and a patent is the end result of a nonprovisional patent application, not a provisional patent application.
- Mature into patents. Provisional patent applications do not mature into patents. If you file a nonprovisional application within a year of the provisional patent application’s filing, in a sense, they may eventually mature into a patent.
- Receive examination from the US Patent and Trademark Office. The USPTO will only review your provisional patent application to confirm that you have met the formalities requirements. It does not review your provisional application for patentability.
Provisional patent applications do not need to meet all of the standards of a nonprovisional patent application, and for that reason they are less expensive to file. But provisional applications must still meet certain legal standards.
Requirements of a provisional patent application:
- a written description of the invention that complies with all legal requirements of 35 USC 112,
- any drawings necessary to understand the invention in compliance with 35 USC 113, and
- formalities requirements such as the title, identification of the inventors, correspondence address, and whether there is a government ownership interest.