As a patent attorney working with cash-strapped startup founders, I recommend the use of provisional patent applications. Startups with limited funds can file the provisional application for $70-$140. Then, they will test the invention on the market during the year to determine if it’s valuable and has traction. If it is, the startup can hire a patent attorney will prepare the non-provisional.
Provisional patents are placeholder patent applications that allow you to claim patent status for up to one calendar year. After that, you can decide to invest the greater amount for a full application (nonprovisional patent request) that will be reviewed and become an issued patent. If you don’t file the non-provisional application within one year, you will lose the provisional filing date and if you make offers for sale or publicize your invention during this period, you may lose valuable rights to your invention. This is the downside of the provisional application.
If you are intrigued with provisional applications, read on. We will provide lots of tips on how to succeed with provisional applications.
Table of Content
What is Provisional Patent Application
Advantages of Provisional Patent Applications
Disadvantages of Provisional Patent Applications
The recommended format for a PPA
Questions To Consider when Preparing the PPA
What is a Provisional Patent Application (PPA)?
A provisional patent is a type of patent application filed with the United States Patent and Trademark Office (USPTO) that establishes an early effective filing date for the invention, but does not mature into an issued patent unless a nonprovisional patent application is filed within one year of the provisional application’s filing date.
A provisional patent application is less formal than a nonprovisional patent application and typically requires less detail and fewer formalities. It is also less expensive to file. However, a provisional patent application does not undergo a substantive examination by the USPTO and will not be granted as a patent unless a nonprovisional patent application is filed and the invention is found to be novel and non-obvious by the USPTO.
Provisional patent application can be useful for inventors who want to establish a priority date for their invention and who are still in the process of developing the invention or testing the market for it. It can also be useful for inventors who are unsure whether they want to pursue a patent but want to reserve the option to do so.
As a conduit to the eventual utility patent, the PPA acts as a placeholder for your subsequent non-provisional application which will eventually become an issued patent if all conditions are met and the PTO allows the non-provisional application to issue as a patent. This allows you to claim priority over any earlier filing date. If you include a detailed description of your invention in your PPA, you may be able to get maximum protection.
Advantages of Provisional Patent Applications
Provisional patent applications have a number of benefits. They include the following:
- If your invention is still in its early development stage, you may want to consider filing a provisional patent application. A provisional application is a great way to protect your invention and will not impact the validity of a later patent.
- In addition, it is easier to file several provisional patent applications, making it easier to keep track of them and avoid costly mistakes. The USPTO has a detailed list of fees, so it is important to carefully examine all of your options.
- A provisional patent application is also easier to prepare and requires fewer legal resources than a full patent application. A provisional application is not substantively reviewed by a PTO examiner and is only checked to meet minimal filing requirements. There is no prior art search required.
- The process is relatively fast and easy, so you can get started without wasting too much time or money. In addition, a provisional can be filed as soon as 12 months after you initially apply, which gives you plenty of time to evaluate your invention and decide whether it is worth filing. Small entrepreneurs can benefit from this type of application.
- A provisional patent will give you an extra year of protection for your invention. Generally, an issued patent lasts 20 years from its filing date, but when you combine the provisional one year period with the non-provisional patent life of 20 years, the net effect is that you have patent protection for 21 years.
- A provisional does not require any attorney fees, and it will save you time and money. It will lay the foundation for a full patent application, so you can begin developing your product immediately.
- A provisional patent application will allow you to use the term “patent pending” for one year, which will alert the public that you are working on a patent application.
- The use of the term “patent pending” will last for one year, but will not give you a monopoly over your invention until you have a full patent application. You can also file a full patent application after the completion of a provisional patent application.
- A provisional patent application will allow you to protect your invention from being copied by others. In addition, it will prevent your competitors from reverse engineering your invention.
- It is also a cheap and convenient method of protecting your invention. You should not wait too long before filing a non-provisional patent application. It is important to understand that a provisional patent will only last for 12 months. It will help you evaluate your invention’s commercial potential and avoid costly mistakes.
- It is an inexpensive way for you to protect your invention while you are in the early stages of development. It can also be a great way to protect your idea. If you are thinking of pursuing a patent, make sure it’s a good idea to apply for a provisional patent.
A provisional patent application gives you enough time to work through these problems and avoid delays. In addition, it allows you to test your idea and refine it before you make a full-fledged version.
Disadvantages of Provisional Patent Applications
While provisional applications are relatively cheap, but they must be followed up with a full non-provisional application within 12 months. The PPA doesn’t confer any utility rights or other patent rights. It only protects your rights for a year. Within one year, the PPA must be converted into a utility application.
Additionally, while the provisional fees are low, you still need to convert to a non-provisional within a year and this process may increase slightly the total cost of the overall patent application process, especially if multiple provisional applications are filed. A provisional patent is often rejected, but there are ways to make it more effective.
Another disadvantage of a provisional patent application is that it is not examined by the USPTO and thus if you wait one year before you convert to the non-provisional application, your examination will be delayed by a year. In certain fast-moving technology such as AI and deep learning, this delay may be problematic for AI startups and in such case you may want to skip the provisional application and file direct as a non-provisional application.
A provisional patent application is usually filed in a rush. Inventors often leave out important components or details of their inventions. However, the lack of full description of the operation of the invention can cause problems downstream.
Let’s say your invention is “in use” or “on-sale” in the United States. You file the PPA, but you don’t convert it to a utility patent application within twelve months. You could lose your right to any patent you have in that situation.
The recommended format for a PPA
While the provisional application does not have a specified format, we recommend that you borrow the format of a non-provisional to ensure a smooth conversion from the provisional application to the non-provisional within a year as required.
While you don’t need to adhere to any specific format requirements in order for a PPA to be valid, it is recommended that you have the following when filing:
- Title of the invention,
- Background information about the invention,
- Description of the product’s design and purpose and any drawings illustrations.
Title
Your title should be a short description of your invention. It should not exceed 500 characters making it easy to clearly describe your invention.
Abstract
The abstract allows the reader to identify the nature and purpose of the technical disclosures related to the invention. An abstract helps readers quickly identify the nature and technical disclosures of the invention. It should not exceed 150 words, and it should be no more than one paragraph. It gives an overview of your invention.
Drawings
Before you begin writing, it is important to draw all details about your invention. This will help you organize your text in a logical way. According to the USPTO, drawings are necessary to understand the invention and should be included with the application.
Drawings may include flow sheets, diagrams, or schematic views for mechanical and electrical inventions. A PPA may be requested by sending photographs or informal drawings. The USPTO requires specific drawings for utility patent applications.
Description
In a non-provisional patent application, you write the description along with the claims to the specification. The details in the applciation should be sufficient to allow a skilled person to create a product, but not require that person to perform extensive research to implement your invention.
It is important to demonstrate concrete and specific methods to achieve the desired result. The USPTO will appreciate your detailed explanations and clear understanding of the whole invention.
It is important to note the best construction method and best use of your invention if you have multiple methods to build it or make it work. It is important to also mention any additional functions that your invention can perform.
- Prior art
While there are no IDS (information disclosure statements) that must be filed in a PPA to preserve prior art citations in the PTO, it is a good idea for you to include citations of prior art in your PPA as reminders to file the IDS during the conversion to non-provisional.
Note any prior art that is relevant to your invention, and explain how it differs from your invention. This will allow you to anticipate arguments that prior art might make your invention more obvious.
It is also helpful to compare your invention to the prior art. You don’t need to search for prior art. However, it is important to disclose your invention to the PTO using the IDS.
- Inventorship
It can be difficult to establish inventorship in a provisional application for patents. If cited in one or more claims of a patent application, the US law recognizes anyone who contributed to the invention’s creation as an inventor.
Any errors in the inventor listing of the PPA can be corrected by Rule 37 CFR. For example, 1.48(e), indicates that: (e) Provisional application–deleting the name or names of the inventor or inventors. A provisional request can be amended to remove the names or names of any persons or people named incorrectly as inventors or inventors within a Provisional application.
- Multiple Inventions
Multiple invention disclosures may be included in a single patent application. The USPTO might charge additional fees if you exceed a certain number of pages in your patent application.
- Fees
You must pay the filing fees when you submit your PPA. If you fail to pay the filing fees, the USPTO will notify you and give you a deadline for responding. You have six months to respond with late fees.
If you miss the deadline, you cannot receive an earlier PPA filing day. As a result, you could lose your valuable patent rights. If your invention is “in use” or “on-sale” in the United States and you fail within 12 months to convert the PPA to a utility application, you may lose your right to patent the invention.
How to do a PPA by yourself
While non-lawyers advertise provisional filing preparation services on sites such as Fiverr, you are better to prepare the PPA yourself. You may want to use patent filing software to guide you along the process. Such software provides a structure that you can use and diagnostics to catch common mistakes and thus reduces your learning curve. If the budget allows, use an experienced patent attorney to prepare and file your provisional or non-provisional patent application. They can help you avoid issues down the road and draft a patent application that issues as a valuable patent.
You can search the USPTO’s official website for published patents as a guideline. You only need to search for patents that belong to the same category as your invention.
To search for the appropriate patent on USPTO’s website, you will need to use the most relevant keywords. You will find the published patent applications as well as issued patents. This will allow you to learn how to make a provisional Patent.
Each idea comes from difficulty or a problem your design is meant to solve. Although the problem itself is not necessary for a patent application, it can be helpful to add details that explain the solution.
You can distinguish your invention’s unique features by evaluating the available solutions, also known as the prior art. It is recommended that your description contain the essential elements of your design.
Although it may seem difficult to describe your invention, it is possible. These are some tips to help you decide how to file a provisional patent yourself. It is a good idea to plan before you begin writing your provisional patent applications. It is essential to plan your application before you start writing it.
The whole application can be divided into separate parts, and, if necessary, additional subsections may be added. Your application content should be organized according to its significance.
For several reasons, it can be advantageous to provide as much detail as possible when filing a provisional application for a patent.
- Increases your chances of getting a Patent granted. The more information included in the Provisional Application, the greater the likelihood that the patent office will consider the invention novel and non-obvious. This can improve your chances of getting a grant for a patent.
- It increases the scope and value of the claims. A provisional application with more details can help define the unique features of the invention, which can increase the scope of claims in the nonprovisional application.
- It increases the patent’s value: Including more information in the provisional applications makes it more likely that the patent is more valuable. This is because it covers a wider range of possible uses and implementations.
- It increases your chances of selling or licensing the invention. By including more information in the provisional applications, it is likely that the invention will become more attractive to potential buyers or licensees.
- This increases your chances of being able stop others from copying the invention. By providing more details in the provisional applications, it is more likely that you invention will be considered unique.
- Increases your chances of being able prove ownership. By providing more details in the provisional applications, it is more likely that an invention will be considered unique. This can make it harder for others to claim that they invented the invention independently.
- This increases your chances of being able defend the patent before the court. A detailed provisional application can be used in court to show the inventor’s conception of the invention. It can also help you defend the patent before the court.
By providing as much detail as possible when filing a provisional application for patent can increase the likelihood of getting a patent granted, expand the scope of the claims, increase the patent’s value, and increase the possibility of selling or licensing the invention. It can also help to defend the patent in court.
questions To Consider when Preparing the PPA
- Why is this invention necessary How can the invention be used to solve the problem?
- Which component/parts are most important in the invention? These components can you combine, rearrange, or eliminate?
- What components are considered new and why? Are these components equivalents?
- How are these components connected to each other? Interconnection is a new concept. Is your interconnection unique?
- What part or parts of the invention did you take the longest to develop?
- Does the invention offer other ways to accomplish the same function?
- Are there other alternatives are there to the invention?
- Which features are the most sought-after by customers/end users, and what do competitors offer?
- What features are the competitors looking for and what can they offer?
- Is the invention making a product more useful? What can you do to improve the product?
- How can the important elements or components of the invention be simplified or rearranged?
- Which component or element is essential? What can you do with such opposites?
- Is the invention as simple as it could be? Are there possible alternative designs that you should describe in the application
The Optional parts of a PPA
PPAs cannot be evaluated so it is not necessary to include prototypes or claims. You can always leave it out.
Claims
It is required for utility patent applications, but it is not necessary for a PPA request. Although it is not required for a PPA application, it should be used to communicate the essence of your invention with the smallest components possible.
They are crucial because patent protection is dependent on the claims that you make in your application. These are the boundaries for your patent. These are the USPTO’s guidelines.
People who wish to design around your patent’s terms use the language in your application. This allows them to narrowly interpret your claims to show that they do not infringe.
To achieve the same goal, they may use variations that are different from your claims. You should ensure that all variations are included in your patent application text to avoid possible attempts to circumvent it.
Prototype
A prototype is not required for a utility application or provisional application. A prototype is not necessary for a utility application or provisional. It’s good to let the world know that you have a prototype.
This will allow you to obtain a valuable patent pioneering patent. It can be accomplished by providing sufficient information to avoid prototyping delays.
Can you search for another applicant’s PPA?
You cannot search online for a provisional invention because they are not published by the USPTO. Provisional patent applications do not get examined by the USPTO Patent Examiner. They remain in patent pending status at U.S. Patent Office for 12 months.
Provisional patent applications that have been filed after the 12-month deadline are marked as abandoned at the PTO and not published. These applications are normally inaccessible to the public, unless the PPA is part of a granted or published patent application. In such cases, the public can view the provisional application via a direct request using USPTO’s public PAIR portal system.