A provisional patent application filed with the United States Patent and Trademark Office can be an important tool for an inventor. Because a provisional patent application is subject to less formalities, it is often less expensive to prepare and file than a regular non-provisional utility application. This can be a huge benefit to large companies and individual inventors alike. But, the actual protection and benefits provided by a provisional patent applications are often misunderstood. Let’s take a closer look at provisional patent applications and bust a few myths.
First and foremost, a provisional patent application is NEVER examined for patentability and NEVER becomes a patent. Instead, it serves as a placeholder, securing a filing date for the invention disclosed in the provisional application for up to a year. Within a year of filing a provisional patent application, the applicant must file a regular U.S. or International utility patent application if they want to pursue patent protection for the invention and claim the benefit of the provisional filing date. A well-written provisional application can certainly reduce the burden required to file a non-provisional patent application, but the road to a patent that starts with a provisional will require at least two applications.
Second, although a provisional patent application is not subject to all the formalities of a “regular” application, it is important that the description and drawings in the provisional application provide a detailed and accurate technical disclosure of the invention. In legal terms, this requires that the application “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” A regular utility application claiming priority to the provisional application will ultimately only receive the benefit of the filing date of the provisional for subject matter that meets this requirement.
OK, so now to the myths:
Myth 1: Once I file my provisional patent application, my invention is protected against infringers.
The provisional application only gives you a filing date. It protects you from other people filing a patent application on your invention after you and claiming it as their own, but it doesn’t become a patent or give the applicant any rights to enforce against infringers.
Myth 2: Provisional patent applications are informal, so they don’t need a lot of detail.
Provisional patent applications don’t require all the formalities of regular applications, such as a set of claims defining the specific scope of the invention, but this informality should not be confused with the need for detail. To the contrary, a provisional application is only as good as the details that it provides. If there isn’t an adequate and enabling written description of the invention, the priority date may be lost and the validity of any patent claiming priority to the provisional application may be in jeopardy.
Myth 3: I can file for a design patent application based on my provisional patent application.
Provisional patent applications are ONLY for utility and plant-related inventions. A U.S. design patent cannot claim priority to a provisional application. To secure a filing date for a design patent, a separate application is required.
Myth 4: Provisional patent applications provide a number of benefits, including the ability to call my invention “patent pending.”
Like some myths, this one is true! Once a provisional is filed, you can use the phrase “patent pending.” You also have an objective record of your invention that is readily verifiable. This can be very helpful when having discussions with potential investors, business partners, suppliers and the like.
Myth 5: I can/should write my own provisional application
As an inventor, you certainly know your invention better than anyone and are the best person to describe its features. But, a provisional patent application is an important legal document and despite the informality of provisional applications, drafting a patent application is an acquired skill, even for gifted writers. Mistakes can be costly. For those inventors that want to save some money by drafting their own provisional patent application, it is still strongly recommended that they make a modest investment in having that application reviewed and revised by a patent professional. I you have done a good job drafting the application, the review should be quick and relatively inexpensive. (If you haven’t done a good job, it is better to find out now than down the road when you need to rely on a poorly written provisional.) Hundreds of dollars spent now may save thousands down the road and put you in the best position to have a robust provisional patent application that fully supports your invention.
For those intrepid soles that are determined to go it alone, take your time and be thorough. Learn as much about the process as you can before filing. There is plenty of information out there on preparing and filing a provisional patent application to guide you, including the USPTO website, such as the presentation: https://www.uspto.gov/sites/default/files/documents/Basics%20of%20a%20Provisional%20Application.pdf