Provisional Patent Basics

The Patent Act of 1952 was amended in 1994 to initially allow innovators to file a provisional patent application (PPA). While there is no such thing as a “provisional patent,” the PPA process offers potential patent holders a variety of advantages:

• PPAs allow you to secure your intellectual property rights by establishing an early priority filing date.
• Provisional applications are easier and less expensive to file than non-provisional ones.
• Before completely committing to the patent application process, you might name your idea and accompanying marketing material “patent pending” while considering its financial prospects.
• While you’re working out the details for a non-provisional patent, PPAs safeguard your idea.
• PPAs notify the public, including competitors, that you are working on a patent application.

This article will discuss why provisional patent applications are useful and what the PPA process comprises. Let’s start with a definition of what a provisional patent application is.

What is a Provisional Patent Application?

Simply put, filing a provisional patent application is a reasonable first step toward obtaining a formal patent. The PPA, which is not subject to inspection, is a less expensive and simpler application that allows you to claim “patent pending” status for your invention while still making changes. It’s crucial to remember that PPAs do not immediately lead to an official patent; to acquire patent rights, you must file a non-provisional patent application (NPA) within 12 months of your PPA.

(Inventors gain the right to label their invention “patent pending” after filing a nonprovisional patent application, which creates a grey area because it is not immediately obvious whether you have simply filed a PPA or invested in a nonprovisional patent application by labeling your invention “patent pending.”)

Your PPA should be as detailed as your NPA in describing your invention. A shoddy provisional application will fail to appropriately safeguard your intellectual property (IP) rights, thereby contradicting the PPA’s objective. A negligent PPA could also be used against you if you submit an NPA, as the examiner may assume that you did not have a full invention when you filed your PPA.

You might be thinking, “What makes a good provisional patent application?” at this point.

In a nutshell, your PPA should explain all of the components of your innovation, how they work, and how they will be used. It’s also a good idea to think about if your invention can be utilized or built-in multiple ways. Including variants in your, PPA makes it more difficult for others to circumvent your IP. Consider this method as an attempt to safeguard both the innovation and the invention. This type of information might also be useful if you are familiar with the manufacturing techniques and/or materials that could be used to make your innovation.

The more questions you can anticipate and respond to in your PPA, the better your innovation will be protected.

What Should Your Provisional Patent Application Contain?

You should also include drawings of your invention with the PPA, though even if you don’t, you’ll still get a filing date. High-quality drawings aid in the explanation of your idea and demonstrate that you have a fully functional concept. They can increase the perceived value of your PPA when presented to a potential investor or licensee. Including a variety of designs can also assist you to avoid having to resubmit your application. Have you overlooked something in your application’s written disclosure section? It may still be covered if it’s incorporated in a drawing. In the case of PPAs, the old saying “a picture is worth a thousand words” holds.

Take the time to truly understand your invention’s point of difference in the marketplace and from the prior art to ensure that your PPA has value. Using Google Shopping and Google Images, look for similar products that are already on the market. To thoroughly investigate the prior art, use Google Patents or the USPTO’s database. Is your invention unique and ground-breaking? Consider yourself a detective attempting to glean as much information as possible from previously copyrighted products. (However, the prior art is not restricted to patents.) Prior art may be used as evidence to prevent you from receiving a patent if you decide to go ahead and file an NPA later.

To comply with 35 U.S.C. 113, the US Patent and Trademark Office (USPTO) suggests filing “any drawings essential for the understanding of the invention.” After you’ve filed your PPA, you won’t be able to add a drawing that explains your invention. If you need to change your PPA for any reason, you will have to file a new PPA, which will affect your priority filing date.

Why Are Provisional Applications a Good Idea for Inventors?

Obtaining an early priority filing date is one of the most significant parts of submitting a PPA. Because the US is a “first to file” country, getting a patent might be a race against the clock. You can get an early filing date and protect your IP rights from others who are working on similar inventions by filing a provisional application.

You can protect your innovation with a PPA even before you’re ready to file a non-provisional application, allowing you more time to improve the commercial feasibility of your creation. Even better, a PPA’s earlier filing date does not start the patent term clock. The 20-year patent term begins after you acquire an official patent, but the PPA allows you to protect your invention for an additional year.

Second, preparing a PPA will assist you with defining your invention and identifying any flaws that should be addressed during the 12-month “patent pending” period. If you file the PPA without the help of an attorney, the knowledge you gather during the process may save you time and money if you need to hire counsel for your non-provisional application.

Think Ahead with Your Provisional Application

If you decide to work with an attorney, look for one who specializes in the field where your idea is being developed. To aid them in doing the best job possible, provide them with your marketing materials as well as your point of differentiation with relation to both current and previous art items. Another strategy to improve your PPA is to create a functional prototype and share it with your attorney.

You may improve your design and strengthen your business strategy as you learn more about the strengths and shortcomings of your idea.

A professional PPA can also encourage more confidence in your design related to business strategy. Potential licensees are more likely to accept your concept if they see that you have a comprehensive design and are knowledgeable enough to defend your IP with a PPA. Firms that file PPAs early on are more likely to raise the most money, allowing you to refine your design and sell your invention. Workarounds, variants, production techniques, and materials should all be included in your PPA to assure investors and future licensees that you have done your homework. You’ve effectively presented them with a road map.

Finally, a provisional application safeguards your idea from unauthorized use. Others will strive to produce competing inventions if your idea is cutting-edge. A PPA is one of the most effective ways to prevent others from copying the fundamental components of your design, providing you a competitive advantage in your industry.

What Does It Mean to File a Provisional Patent Application?

The USPTO website has thorough information on how to file a PPA, including the stages and requirements. Without the help of an attorney, you can technically register a PPA on your own. However, you should contact a patent attorney at the very least before filing your provisional application. An attorney’s counsel could be invaluable, especially if your innovation is sophisticated or if your patent is likely to be challenged.

While a PPA has fewer formal requirements than an NPA, the USPTO still advises applicants to think about and follow their guidelines. You may access USPTO’s rules, filing procedures, and needed forms on the Provisional Application website. PPAs can be submitted electronically without the need for a formal claim, swearing, or prior art assertions. Filing fees are reasonable, although they vary depending on the size and nature of your business ($70 for micro-businesses, $140 for small businesses, and $280 for large businesses at the time of publication). Individuals, small enterprises with 500 or fewer employees, institutions, and 501(c)(3) NGOs all qualify as micro-entities, thus most inventors will only have to pay the $70 filing cost.