Provisional Patent Applications: A History
Since being established in 1994 as an amendment to the Patent Act of 1952, which sought to create timing advantages, like that of the Paris convention of 1883 for foreign filing (you can read our previous blog on foreign filing here), provisional holds this date for foreign filing as well, provisional applications provide an inventor a set filing date for their invention. The filing (priority) date lasts for only one year before a full patent application must be filed, or it is abandoned. Since there are lesser requirements for a provisional application it is essentially used to afford inventor’s enough time to put together more comprehensive patent application while using the “patent pending” label, as well as establishing their priority date; thus, cementing their claim under the requirement provisions of the America Invents Act (AIA).
While provisional applications may be beneficial for certain patent strategies, they are not necessarily the cheaper and easier route that many seem to believe them to be.
Filing Provisional Patent Applications: What it’s Not
The actual filing fee in the United States Patent and Trademark Office (USPTO) is low for a provisional application, ranging from $65 to $260 (fees are subject to change annually), but that is only a small portion of the total investment for any kind of patent application. A complete application (creatively termed a “non-provisional application” by the USPTO) must be filed within one year and no extension is possible. Because it has become a two-step process (provisional, and then full, application), the total cost is greater than for the unitary full patent application process. The USPTO patent application filing fee is $400 to $1,600, depending on certain characteristics of the applicant. If foreign filing is to be done, those costs arise at the same time as the U.S. full application filing.
More importantly, a provisional application is not a “quick and dirty let’s get something on file and we’ll complete it later matter.” If the application is not properly written and complete, disaster may strike months or years later. The filing date for the provisional application is good only for the technical information that is properly and completely described. Anything missing may be lost forever and could result in a patent which eventually issues being invalid.
Thus, provisional applications should be filed only after they are properly prepared in accordance with the patent laws and rules.
Filing Provisional Patent Applications: Reasons to File
Outside of AIA considerations, there are a few circumstances where it is appropriate to file provisional patent applications at all. One is when the invention is to be disclosed by publication or at a conference in a very few days and there simply is not sufficient time to prepare a complete application with appropriately drafted claims. Even then, every effort must be made to prepare a complete disclosure, even if the format and editing are not perfected.
Other instances are where an application is necessary to preserve a date but the applicant knows he may not go forward with the project or with a full application unless appropriate financing is procured, or where the technology is iffy and may be dropped in less than one year.
There is one other legitimate purpose for a provisional application. Because a provisional application is not examined, it does not count as part of the 20-year term of the patent which eventually issues. In effect, filing a provisional application is a way of getting 21 years of patent life.
The bottom line is that provisional applications are not a panacea for applicants who don’t want to spend the money for a patent application. And they are not in any way to be considered a substitute for a full patent application. A provisional application will never, itself, become a patent.