If you are considering filing a provisional patent application, you’ll probably be wondering about the cost and eligibility requirements, as well as how to get an early priority filing date. This article outlines the basics of filing a provisional patent application. Once you’ve got the basics down, you’ll be ready to begin your application Read on to learn more.
What is a provisional patent application?
A provisional application for patent (provisional application) is a U.S. national application filed in the USPTO under 35 U.S.C. §111(b). It is an application that contains all of the elements of a regular patent application, except for the patent claims. This type of application does not require a formal patent claim, oath, or declaration. It also should not contain any information disclosure (prior art), as they are not subject to examination. Provisional applications allow you to establish an effective filing date after which follows a 12-month window to file corresponding non-provisional patent application.
The main difference between a provisional and a non-provisional application, is that the provisional patent application does not require any formal patent claim, oath, declaration or information disclosure. However, the non-provisional patent application is more complex and longer and will eventually be examined. A non-provisional utility patent application is the precursor to securing patent protection and is the immediate type of application that follows a provisional application and which is the stepping stone to securing patent protection.
Filing a provisional application for patent protection is overally a smart idea for many reasons. These are as follows:
- It allows you to establish an effective filing date.
- It doesn’t take as much time or effort to file.
- It uses an informal form of patent application;
- It is not necessary to take a formal oath or make a declaration.
- It gives you another year to test your invention on the market, and to make an informed decision about whether or not to pursue the patent.
Filing a provisional patent application
Filing Requirements
The emphasis in provisional patent applications is the need to have a good technological description of the invention. It is not enough just to secure an effective filing date, but also the invention should be sufficiently described in a manner that the document speaks for itself and can pass examination by the patent office when an application for a non-provisional patent protection is made.
In filing a provisional patent application, the United States Patent and Trademark Office (USPTO) has listed several requirements including:
A detailed written description of the invention (specification), including:
- Background of the invention.
- Summary of the invention.
- Drawings describing the invention.
- Title of invention.
- A detailed description of the invention.
- Name(s) of all inventors.
- Inventor(s) residence(s).
- Correspondence address.
- Attorney information (if applicable).
- U.S. government interest (ownership) (if applicable).
This information is filled into the USPTO form PTO/SB/16 (Provisional Application for Patent Cover Sheet) which can be accessed and downloaded from the USPTO website.
Image Credit: USPTO
Provisional Application followed by Utility Non-Provisional Filing Fees
The chart displayed shows the total cost when you first file the provisional application and then convert into a utility non-provisional application within a year. The first line represents the provisional filing fee, while the next block of four lines represent the cost of the utility non-provisional filing. After examination and if allowable, you will have an issue fee for the non-provisional application. In addition, every four years from issuance, there is a maintenance fee. Of course, the PTO fees vary and are subject to change from time to time depending on the factors of each case so the amount shown in the graph is as of late 2022.
Image Credit: USPTO
Electronic Filing
A provisional application is filed with the United States Patent and Trademark Office (USPTO) and can be electronically filed if EFS is used. EFS-Web allows for secure filing of patent applications via the Internet, even provisional ones. The applicant prepares documents in Portable Document Format, (PDF), attaches the documents, validates that they are compatible with USPTO’s internal automated information systems, then submits the documents and pays fees using real-time processing. Fillable EFS-Web forms can be used to automatically load data into USPTO information system.
Filing By Mail
A provisional patent application can also be filed via mail to an address given by the USPTO. Ordinarily the address is as follows:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Other Costs in filing a Provisional Application
You should consider filing a provisional patent application if you plan to submit a non-provisional utility patent application in a year’s time. This type of application secures an initial filing date for your invention, and gives your client “patent pending” status. During this time, the USPTO does not examine your invention. But your provisional disclosure must be solid enough to make a strong patent. If you are considering submitting a provisional patent application, keep in mind that the cost will increase over time.
You can save money by filing a provisional patent application, which keeps the initial application costs down to a minimum. Additionally, you can apply for a patent within a year of the invention, allowing you to evaluate the benefits of a provisional patent application before filing a formal application. However, the actual costs will depend on your invention and the details of the patent process.
To file a provisional patent application, you can hire a patent attorney, who will submit your application to the USPTO on your behalf. The cost will vary depending on the complexity of the invention. To avoid paying an unnecessary fee for this service, you should have a good budget for your attorney’s fees, which may cover your legal costs as well as research and communication with the examiner.
Hiring an attorney to file a provisional patent application is a good idea for many reasons. First, hiring a patent attorney will help you avoid making a mistake and maximize your chances of success. Secondly, hiring a patent attorney will help you decide whether to apply for a provisional patent internationally or not. In the end, a patent attorney will make your application as good as possible and keep you from making costly mistakes.
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Criteria for obtaining a provisional patent application
The basic criteria for a provisional patent application include having a significant contribution to the invention. This contribution must be at least one claim in number. The invention must be new and not have been made before. Moreover, the application must contain the basic filing fee. In order to file a provisional patent application, you should file it within 90 days of its filing date. You must also include a cover sheet.
Additionally, a provisional application requires that you describe your invention in as much detail as possible. Even though this is only a provisional application, it must be detailed enough for the patent office to understand your invention and determine whether or not it meets the patentable subject matter requirements. The description should include all applicable details, such as dimensions and shop drawings. Make sure to include any schematics and abstracts, if any. Be sure to write the description in a clear and professional manner, free of grammatical errors. Also, review your notes to ensure that all the information is accurate and complete. If there are any, consult with a patent attorney.
Besides describing your invention in detail, you should also submit your drawings with your provisional patent application. A drawing can be any illustration of your invention, but it must be understandable and fit into a regular file folder. The drawings can be black and white photographs, color pictures, computer-created images, or even hand-drawn sketches. Whatever the medium, the visual representation should not contradict the written description.
The written description must be provided with your provisional application in order for it to be granted a filing date. It should contain all the information required for the public to understand your invention. You should also include any drawings necessary to fully understand your invention. However, if you don’t have the drawings, you will not be eligible for an earlier filing date. Furthermore, you will be prohibited from amending the provisional application after it is filed.
Getting an early priority filing date for a provisional patent application
As with any patent application, a provisional patent application is an important step in the process. The filing date of the provisional patent application is important. Priority is granted according to the first to file rule, so you must be sure your filing date is early enough.
A provisional patent application will be more likely to receive priority if the application was filed before the invention was published in the public domain. Prior art can also include records that were published before the filing date of the provisional patent application. Getting an early priority filing date will give your application an advantage over competitors.
You can also add new subject matter to a non-provisional patent application, and the latter will claim priority over the provisional. The advantage of filing a provisional patent application is that you will know if your invention is a good fit for the market before committing to filing a full patent application.
In some cases, you may be able to get an earlier priority filing date by converting your provisional patent application. However, you must take into account that if you fail to convert your provisional patent application to a final, non-provisional application, it will lapse into obscurity.
After filing your application, make sure you make all necessary payments to get the patent. After filing your provisional, the Patent Office will mail you a receipt that shows the date on which the provisional was filed.
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If you should file a provisional patent application
The first question you may have when it comes to filing a patent application is whether or not you should file a provisional patent application. A provisional patent is the perfect way to secure your place as the “first to file.” In contrast to a non-provisional application, a provisional patent application is easier to prepare and does not alert competitors to your invention.
In any case if your invention is considered to be cutting-edge, it will attract many competing inventions. A provisional patent application will prevent competing inventions from copying core design components of your idea. This will give you an edge over competitors in the market. If you are unsure of whether or not you should file a provisional patent application, it is important to check the requirements. Additionally, it gives you time to refine your idea and test it before filing a full patent application.
Conclusion
Although a provisional patent application only gives limited protection, it is still the best way to ensure that you have adequate legal protection for your invention in the shortest time possible and gives you more time to refine your invention. If you don’t have the resources or expertise to prepare a full patent application, you can consult a patent lawyer who can help you with the process.