A provisional patent is a patent application that acts as a “place holder” when you invent something new but are not ready to start the process of obtaining an issued patent.
A provisional patent is not examined by the U.S. Patent and Trademark Office. It merely reserves your right to claim legal ownership of the innovations that are disclosed in the provisional patent application.
When you file a provisional patent application, you start a statutory clock that runs for 12 months. If you file a standard utility patent application during that twelve month period and claim “priority” to the provisional patent application, then the two are linked, and you can claim ownership of the innovations in the provisional application as part of your non-provisional utility patent application.
If you fail to file a utility patent application during the 12-month period, then everything in the provisional patent application is considered part of the public domain—you can no longer claim ownership of it in a utility patent application.
Why would someone file a provisional application if it is not examined and has a 12-month deadline to prepare another application (at additional cost)? There are several reasons:
- A provisional application does not require claims. Claims are the formalistic legal terms at the end of a utility patent application that define the legal rights that the patent holder is trying to secure. They are very difficult to prepare well. If you are in a hurry, or uncertain how you want to approach the patenting process, then a provisional application is a way to start the process.
- A provisional application is typically less expensive. Because it is not examined, the level of scrutiny and care needed for a provisional application is lower than a utility patent application. Avoiding time needed to prepare claims also reduces the cost of a provisional application.
- Provisional applications are never published. If you never file a utility patent application, the contents of your provisional patent application remains confidential. It does become part of the public domain in that you can’t claim legal rights in it—but others do not have the chance to research provisional applications.
- Provisional applications are a convenient way to claim rights in a series of related innovations during a 12-month period, and then roll those up into a single utility patent application. For example, you might file a first provisional application related to a new technology, and then file a second provisional application 3 months later with additional things that you have learned or developed, a third provisional might be warranted a few months later. In this way, you can secure the earliest date possible for each innovation—right after you develop it. But then you can file a single utility patent application within 12 months of the first provisional application and claim priority to all of the provisional applications that you filed during the year.
A few years ago, provisional applications were treated differently. Sometimes people would file a brochure or a PowerPoint presentation, simply to make a record of their innovation, even if the details were sketchy. But when the United States switched to a First to File system under the America Invents Act, the importance of filing a well-done provisional application increased significantly. This is because only the actual contents of the provisional are counted as your innovation, rather than the things that you invented but did not disclose (under previous laws, you could still claim protection on what you invented but had not filed a patent for).
Provisional patent application continue to play an important role in most patent portfolios, though the specific strategy depends on factors such as the size of your portfolio, the pace of your technical developments, your legal services budget, and the timing of your patent filings in multiple countries.