Provisional Patent Applications Overview

The U.S. Patent and Trademark Office (USPTO) offers inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States than traditional nonprovisional patent applications.

A provisional application does not have the same formal patent claim, oath, declaration, and other requirements of a nonprovisional application, but does provide the means to establish an early effective filing date in a later filed nonprovisional patent application. It also allows the term “Patent Pending” to be applied with the described invention.

Priority

• The U.S. joined the “first-to-file” world and the first inventor to file gets the patent, as opposed to the old USPTO system of “first-to-invent”
• The provisional application gives inventors and companies nearly 12 months to explore market acceptance and opportunities
• Filing a provisional application is NOT a substitute for filing a non-provisional (utility or design) patent application

Timelines

• The provisional application expires ON the one-year anniversary; the non-provisional application must be filed WITHIN the one-year provisional period (Read: Patent Application Preparation Outline)
• The provisional application does NOT start the pendency clock running to get your patent application evaluated (“examined”) by the patent examiner
• A public disclosure (e.g., publication, public use, offer for sale) more than one year before the provisional application filing date would bar patenting in the U.S.

Fees

• The provisional filing fee is less than the non-provisional filing fees ($130 USD versus about $730)
• The attorney fees are typically substantially less to prepare a provisional application than the non-provisional application, depending on the complexity 
• Once the Invention Disclosure Questionnaire has been completed by the client, a better estimate of the attorney fees can be provided  

Scope

• The provisional application needs to anticipate as many different ways of practicing the novel aspects of the invention as possible in order to give sufficient flexibility to write a good non-provisional patent application

• The provisional application is subject to the same disclosure requirements of the non-provisional application. At a minimum it must:
• (1) sufficiently teach others how to “make and use” the invention, and 
• (2) show that they were “in possession” as of the date of filing of the entire invention AS CLAIMED in the follow-on nonprovisional application
• There is a risk of not including enough details if no provisional claims are submitted with the provisional patent application

Formality

• The provisional application is never examined and is not required to have claims
• There are no strict format and language guidelines for the information submitted in a provisional application 
• The provisional application does not require a formal oath (declaration) signed by each inventor
• The provisional application does not require listing of known references in an information disclosure statement (IDS)
• A provisional application can include color and black-and-white pictures in addition to standard line drawings, flowcharts and so forth for the same initial provisional filing fee 
• The provisional application is subject to the 100-page limit or extra fees apply
• Multiple provisional applications can be filed and later combined into a single non-provisional patent application 

Royalties

• Reasonable royalties and other patent damages are court awarded judgments for successfully proving patent infringement by others on a patent that has been published and later awarded 
• Reasonable royalties and other patent damages cannot accrue from the provisional patent application filing date because the provisional application is not published within the 12 months of its pendency
• Reasonable royalties are only available from the time of publication and only if the infringed claims as published match the claims as issued

Next Steps

This overview may seem complex, but it is extremely important to know and understand the specifics in applying and getting your services patented. Not fully appreciating these details will often lead to your patent application being rejected and unnecessary delays in securing your brand. Lloyd & Mousilli attorneys are ready to help you understand the nuances of protecting your intellectual property and  preparing your patent applications to protect your company and brand.