TL;DR
A provisional patent application is a “placeholder” or a preliminary patent application that has much fewer requirements, and allows you to say “Patent Pending” upon filing. The provisional patent application is only good for 12 months, which means it expires automatically 12 months after filing unless it is converted into a non-provisional patent application. Unlike a nonprovisional, a provisional patent application is never examined or reviewed substantively by the patent office.
Legal Background and Framework
The provisional application was introduced to US patent law with a 1994 amendment of the Patent Act of 1952. This law was not a complete departure from the existing patent framework. In 1901, the United States ratified the Brussels revision of the Paris Convention Treaty for the Protection of Industrial Property, which gave applicants 12 months to claim priority to foreign-filed applications. The 1994 introduction of the provisional application thus provided a domestic filing equivalent matching the 12-month priority benefit that had been afforded to foreign applications for almost a century.
The specific legal provisions that enable applicants to file a provisional patent application are 35 U.S.C. §111(b) and 35 U.S.C. §111(a), which allow applicants to establish an early effective filing date in a subsequently filed non-provisional patent application.
What is a Provisional Patent Application?
A provisional patent application is a type of utility patent application that can offer specific benefits. This filing type allows you to file a patent application without certain formal parts of a patent application, such as patent claims, oaths/declarations, and information disclosure (prior art) statements.
The provisional patent application is never substantively reviewed by the patent office. For this reason, many people refer to it as a "placeholder" application. Its primary function is to secure your place in line and establish a filing date and a "priority date" for your invention.
In the US (and most countries around the world), we are in a first-to-file system, which means that whoever first files a patent application, has the earliest priority rights to that invention (35 U.S.C. § 102). Consequently, filing a patent as early as possible becomes crucial, particularly in competitive fields where multiple people might be working towards solving a known problem.
Provisional patent applications have gained popularity due to two main reasons: (1) the filing date of the provisional patent application can establish a date of priority, and (2) the reduced filing requirements make it easier to quickly file the application (in other words, less time is typically needed to submit a provisional application as compared to a non-provisional patent application).
What is a Nonprovisional Patent Application?
This post is not about non-provisional patent applications, but it is sometimes helpful to compare and contrast to better understand provisional patent applications. If you want to learn more about non-provisional patent applications, you can check out our post here, but here is brief description:
A non-provisional patent application is a type of utility patent application that includes formal patent claims, abstract, and associated signature documents. The non-provisional application gets examined by the patent office, and eventually issues in an issued patent that looks like this:
Advantages of a Provisional
While most attorneys might steer you away from even considering a provisional, there are actually many reasons to file a provisional. Here are a several benefits to consider:
Cost
A provisional provides simplified filing with a lower initial investment with 12 months to assess the invention's commercial potential before committing to higher cost of filing and prosecuting a non-provisional application for patent. For example, provisional filing fees for startups have a $130 government filing fee compared to non-provisional filing fees of $800. Legal fees for a provisional are also typically lower than a non-provisional, making it an ideal option if you want to conserve early startup costs or if you have restricted funds for a full utility application.
Speed
Provisionals can be prepared and filed faster due to fewer requirements. There is no need for a formal patent claim and a formal information disclosure (prior art) statement.
Priority Filing Date
The provisional application officially secures the US patent application filing date for your invention, or in other words, it establishes your “place in line” for getting a patent. Given the first-to-file system in the US, filing earlier means you get examined first (and a higher chance of patentability since you’re in line earlier).
"Patent Pending" Status
Once you submit a provisional, you have legal, authorized use of the "Patent Pending" notice for 12 months in association with the description of the invention. This status can help to secure financing from potential investors. It also lets you use the phrase to help market your invention to consumers while dissuading competitors from imitation due to infringement risks. Be aware that patent protection is only officially granted when the patent is granted (you'll need to follow through with a non-provisional within 12 months for this).
Public Disclosure
A provisional gives you security to publicly disclose your proposed invention without fear of affecting your future patentability.
International Filings
Filing a provisional starts your clock for international filings (or in patent parlance, it begins the Paris Convention priority year). If you file a provisional, you must file internationally within a year of the provisional filing date for most jurisdictions.
Disadvantages of a Provisional
A provisional application comes with possible risks, especially when not done well. And, cheaper isn’t always better. Many attorneys might churn out a bare-bones provisional application that lacks crucial information, like sufficient details and disclosure.
A valuable provisional includes a reasonably detailed description of the invention, even if it is a work in progress. If your provisional application lacks critical details or misses important invention elements in the disclosure, your non-provisional application down the line can be harmed. You run the risk that others may file a patent application covering any features left out or poorly described in your provisional filing.
Because a provisional is a preliminary patent application, the downside is that by itself a provisional does not result in an issued patent. You need to file a non-provisional later to get the benefits of a provisional. This means that as a startup, you’ll need to plan to have an appropriate budget for a costly non-provisional within this time period. It’s capital intensive.
You’ll also need to consider whether you want to have international patent coverage for your invention. If you do submit a provisional application, you'll need to file international filings within a year of the provisional filing date for most jurisdictions, and foreign applications could be just as expensive as in the US. Consider your business strategy beforehand as there is no way to defer hard patent deadlines, meaning your patent rights from a provisional could be lost due to these reasons.
What is a 'Priority Claim' or 'Priory Date'?
A big advantage that provisional patent applications provide is that they enable the applicant to establish a “priority claim” or a “priority date” for your invention. But what exactly is a priority claim?
A priority claim is generally considered the date of invention, and it is important because it sets into motion a few different triggering events. For example, it is fair game for the patent office to search for and cite invalidating prior art against you before the priority–references that are dated after the priority date cannot be used to invalidate your patent application.
Confused? Here is an example: Let’s say you filed your application on January 1, 2022. Any reference before that date can be cited against you to invalidate your patent, but any reference after January 1, 2022 cannot be prior art. Think of the priority date as the date as establishing your place in line. The patent statutes provides that the claim of priority allows the later filed application to enjoy a priority date as of the filing date of the earlier filed patent application, and not the actual filing date of the later filed patent application (37 CFR §1.78)
A provisional application gives you an earlier assigned filing date, which is important because it establishes your “place in line” for getting a patent. As it’s first-to-file in the US, filing earlier means a higher chance of patentability since you’re in line earlier.
When to Consider a Provisional
Choosing when to file a provisional over a patent application can be an impactful decision for your startup. Bad timing can be a waste of money or lose you future patent rights. Consider a provisional if:
You plan to publicly disclose your invention (e.g., a conference presentation, poster session, public announcement, social media), or meet with investors, sponsors, collaborators, and/or competitors
You anticipate making further improvements or modifications to your invention within the next year
You are a startup tight on initial capital
For many, the ability to delay upfront costs is advantageous before committing significant resources to a full non-provisional application. A provisional is typically substantially expensive than a non-provisional. And, you can file multiple provisional applications for different aspects of your invention within a one-year timeframe and later combine them into a single non-provisional application. This capability allows you to protect various elements through multiple provisionals (especially useful during the ongoing development of your new invention) and assert those claims in a future non-provisional application.
FAQs
Q: I’ve filed a provisional. Now what?
You’re temporarily protected with a provisional, and you have 12 months to file for a non-provisional. We’ll follow-up a few months before the 1-year timeline to check up on if you want to continue with a full non-provisional…
Q: When do I need to file a follow-up formal patent application (i.e. non-provisional)?
Within 12 months (1-year). The §111(a) non-provisional application for patent must be filed within 12 months of the provisional application for patent filing date to claim the benefit of the provisional application filing date.
Q: Can I revive an abandoned provisional patent application?
No. Once abandoned, a provisional patent application is non-revivable and you let go of your obtainable benefits of a provisional patent application. The U.S. Patent Office has a strict 12-month pendency period.
Q: How much does a provisional patent application cost to file?
We charge a flat fee of $5,000 for a provisional application, and $12,000 for a non-provisional application.
Q: I’ve filed a provisional application with Outlier. How much would it cost if I wanted to to follow-up and do a non-provisional?
$7,000. This cost is simply the difference between our fees for filing a provisional and our fees for filing a non-provisional.