Provisional patent applications have been part of the patent process in the United States since 1995. Provisional applications are considered "provisional" because they are temporary. These applications are never examined by the U.S. Patent and Trademark Office, and they will never turn into actual granted patents. In order to obtain patent protection, the inventor who files a provisional application must file a regular (non-provisional) application within one year of the filing date of the provisional application. If a non-provisional patent application is not filed by then end of this year, the provisional application will simply expire. See MPEP Section 201.04
If a non-provisional application is filed within that one year time period, that application can "claim the benefit" of the provisional application. This means that the non-provisional application will be treated as if it were filed on the filing date of the provisional application. Early filing dates may prove useful in helping to prove who was the first inventor of an invention. As the United States has moved to a first to file system with the passage of the America Invents Act, early filing dates become even more important in cases where multiple parties are filing for patent protection on the same invention. In addition, early filing dates can help avoid losing patent rights through loss of novelty, as explained in the BitLaw section on patent requirements. See MPEP Section 211.01(a)
In addition to the early filing date, provisional applications are useful to extend the duration of a patent. The duration of a patent is twenty years from the filing date of the non-provisional application. Since the filing date of the provisional application is not used to determine the patent's expiration date, it is possible to extend the duration on a patent to twenty-one years from the first filing by filing a non-provisional application one year after the provisional application. See 35 U.S.C. 154 and MPEP Section 2701
Finally, provisional patent applications are less expensive to file, since the the government fees are less, and there is no need to file patent claims or to disclose prior art to the patent office. Many individual inventors take advantage of the fact that provisional applications are not examined by the patent office by filing an invention description that they drafted on their own as a provisional patent application rather than hiring a patent attorney to draft their application. While doing so is sometimes a reasonable approach to protecting an invention (see below), care must be taken to avoid losing patent protection.
The provisional application must include a description of the invention. While this description does not need to conclude with claims, the description must still meet the best mode and enablement requirements, which are briefly described in the BitLaw section on regular (non-provisional) patent applications. If the provisional application does not meet these requirements, it cannot be relied upon by a later filed applications.
In addition to the description, the provisional application must include:
- all drawings necessary to understand the invention;
- the names of all inventors;
- the appropriate filing fee (approximately $125 for individual inventors); and
- a cover sheet that identifies the invention.
The cover sheet can be obtained from the U.S. Patent and Trademark Office through this link. You may also wish to review the Patent Office brochure describing provisional patent applications or the PTO web site page that contains additional instructions for filing a provisional application.
One of the problems with provisional applications is that it may not be clear whether the description of the invention meets the best mode and enablement requirements until the regular application is drafted with a complete claim set. This is because these two requirements are always analyzed in connection with the claimed application. If there are no claims, it can be difficult to determine if the invention is actually enabled by the description.
Unfortunately, too many provisional applications are hastily drawn and do not meet these requirements. When this happens, the provisional patent application is ineffective. Even if these inadequacies are addressed in the later-filed non-provisional application, the money and time spent on the provisional application has been wasted. Even worse, sometimes an inadequate provisional application is relied on to avoid the statutory bars relating to novelty. In these circumstances, the non-provisional application is not timely filed because the inventor felt that the time deadline was met by the provisional application. When it turns out the provisional was inadequate, all patent rights can be lost.
In the figure above, for example, a provisional patent application was filed that fully described two different aspects of an invention, namely "Element A" and "Element B". At the time the provisional application was filed, the inventor thought that these were the two most important parts of her invention. This provisional application was filed on January 1st. In the example of the first non-provisional application, an attorney drafted claims that relied on these two elements to overcome the prior art. Because these elements were fully described in the provisional, this first non-provisional application is able to claim the benefit of the provisional. In other words, even though the first non-provisional application was filed on August 1st, it will be treated as if it had been filed on January 1st, which is the filing date of the provisional application. In the example of the second non-provisional application, the attorney drafted claims that relied upon "Element C" along with "Element A" in order to get around the prior art. Because the provisional application did not describe Element C, this second provisional cannot claim priority to the provisional application. If this second non-provisional was filed on December 1st, it will be treated like it was filed on December 1st. If someone else disclosed the same invention on June 1st, the first non-provisional will still be patentable because it was fully disclosed in the provisional application, while the second will not be patentable.
An example of this problem was encountered by the inventor in New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co. In this case, the plaintiff invented a new drill bit where the bit body is "angled with respect to the sonde housing." While this angle was described in the non-provisional patent application, the angle was not disclosed in the originally filed provisional application. Unfortunately, the plaintiff had offered the drill bit for sale more than one-year before the non-provisional filing date, and therefore the patent would be invalid under the statutory bar section of 35 U.S.C. 102(b) unless the patent was entitled to the filing date of the provisional application. Since the claim limitation of the angled drill bit body was not adequately disclosed in the provisional application, the inventor could not claim the benefit of the provisional application and the patent was declared invalid.
It is because of these concerns that patent attorneys are reluctant to get involved with hastily drafted provisional patent applications that have no patent claims. Attorneys rarely are willing to do a quick review of a client's self-made provisional application because it can be difficult to know whether the description is adequate without a detailed study of the invention and the prior art. If the attorney carefully analyzes the prior art, drafts a set of claims for the invention, and then amends the application to fully support those claims, then the provisional application is now ready to be filed as a regular application. As a result, there is little cost savings to the provisional application (beyond the government fee), and a non-provisional application is generally filed.
Nonetheless, it is sometimes possible to hire an attorney to give you simple advice on your provisional application. For example, some attorneys may be willing to give you 3-4 hours of their time to review your application. They will do their best to assist you in that limited time frame, but you must be aware that they will not be able to fully draft or revise your application in that short period of time.
Use of provisional applications
Of course, there are some circumstances when it is appropriate to file a provisional application. For instance, sometimes an application has to be filed before a full patent application can be written. When patent rights can be lost if an application is not filed on time, it is better to file a hastily drafted provisional patent application on time then to file a well prepared application after a critical bar date. In these circumstances, the initial draft should be filed as a provisional, since the fees are cheaper and the inventor does not want the patent office to examine this draft anyway. The provisional application should then be replaced with a more carefully drafted regular application claiming benefit of the provisional application.
Another legitimate use of provisional applications is to extend the life of a patent. In this case, a complete patent application is drafted in final form, and then submitted as a provisional application. At the end of the one year deadline, the regular non-provisional patent application is submitted. If the regular application matures into an issued patent, it will expire twenty years after the regular application filing date (or twenty-one years after the provisional filing date).
Finally, it is sometimes impossible for individual inventors to afford the cost of filing a regular application. The attorney fees for drafting a patent application can run from $6,000 to $20,000 or more, in addition to the $350 to $1,000 fee the government will charge. Since the inventor is financially incapable of filing a well-drafted regular application with the help of an attorney, a self-made provisional application may be the only choice. The inventor would then have one year (before the regular non-provisional application must be filed) to interest others to invest in or purchase the invention. Care must be taken in these circumstances not to rely too heavily on the provisional application. Most patent attorneys would advise clients who have filed a self-drafted provisional patent application to file a complete, attorney-drafted regular application as soon as it is financially possible.