Provisional Patents Explained

You have probably heard the term “provisional patent.” This term, however, is a bit of a misnomer.  The United States Patent and Trademark Office (USPTO) does not issue “provisional patents.” The term “provisional patent” really means provisional application.

What is a Provisional Application?

“London Discovery Trail 2012” by Karen Roe from Flickr (Creative Commons license)

These are the key points you should know about provisional patent applications:

  • A provisional patent application enables an inventor to obtain an early effective filing date without having to file all the required elements of a regular (or non-provisional) patent application. Specifically, a provisional application needs no formal patent claim, oath or declaration, or any information disclosure (prior art) statement.
  • A provisional patent application also enables the application owner to associate the term “Patent Pending” in connection with the invention.
  • A provisional application can serve as the “priority date” for a later filed non-provisional patent application – provided the later filed non-provisional application is filed within 12-months of the provisional filing.
  • A provisional application is never examined and will never result in a patent by itself. Only a non-provisional patent application can ever become an issued patent.

More information about provisional applications can be found on the USPTO website.

What is a Regular (or Non-Provisional) Patent Application?

Here are the key differences between a non-provisional utility patent application and a provisional application:

  • A non-provisional application refers to a utility patent application that actually gets examined by the USPTO and can ultimately issues as a patent.
  • A non-provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees.

More information about non-provisional patent applications can be found on the USPTO website.

Beware:  A Provisional Application can be a Trap for the Unwary

“Attention!” by Blondinrikard Fröberg from Flickr (Creative Commons License)

A provisional application is an effective way to get an early filing date. Submitting a provisional application is a way to protect your ideas, which can (and should) be done before introducing a new product at a trade show, or before disclosing the idea to a potential buyer or manufacturer or other prospective business relationship. While the PTO will accept just about anything you file as a provisional application (even photos), the filer must understand that one can only claim benefit to a provisional filing date if the ultimate patent claims were “enabled” by the provisional patent application. In other words, if your provisional application only discloses the general outline of your new widget, patent claims directed to details of the new widget (that were not disclosed in the provisional application) are not entitled to the earlier provisional filing date.

Bottom line: While a provisional application is a valuable option in many cases, a provisional application must always be as complete and as accurate as possible to be effective.

If you need more information on filing a provisional or non-provisional patent application, please send us a message. We have lawyers licensed in Arizona, Connecticut, and New York, and we can handle federal intellectual property matters in any U.S. state and assist with international matters. For even more information, sure to connect with us on Facebook.

Post by patent attorney Joseph Meaney, edited by social media attorney Ruth Carter.

Contact an Experienced Intellectual Property Attorney Today
Call to schedule an appointment.