Pros and Cons of Provisional Patent Applications

A U.S. provisional patent application – often regarded as an “informal” patent application – essentially functions as a “bookmark” in the U.S. Patent & Trademark Office, having been accorded a filing date for whatever is contained within the application documents. Thereafter, until the timely filing of a U.S. utility patent application (a “complete application”) claiming priority to the provisional application, no action is taking by the USPTO.

There are a number of situations where filing a provisional application may be useful to further specific goals. For example, the provisional application process may be beneficial in the following cases:

  • Where preservation of formal proof of first invention is important.
  • To delay some of the costs of filing a complete application.
  • Where a basic invention has been created, but further development perfecting improved em-bodiments of the invention is expected within a year.
  • When it is important to obtain customer or vendor feedback to determine whether the inventive concept fulfills a real commercial need, parts are practical to produce, etc. (it still is preferable to make such disclosures in confidence).
  • To provide the ability to make disclosure to a development partner, e.g., to give the partner an opportunity to review and possibly add to inventorship or to the disclosure, or to comment on the application (again, it still is preferable to make such disclosures in confidence).

In furtherance of these and other goals, the provisional application process provides a number of legal and strategic advantages. However, there are some significant disadvantages as well. First, the ad-vantages:

  • Quickly obtaining an official filing date for an invention before public disclosure of the invention.
  • Unequivocal proof of an invention date at least as early as the filing date (but only to the extent that the filed provisional application is “enabling” – more on that below).
  • A somewhat lower initial cost compared to a complete application, and thus postponement of some patenting costs.
  • The right to mark a product embodying an invention disclosed in a filed provisional application as “patent pending”.
  • Creation of a “priority document” for a later-filed complete application in the U.S. and for lat-er-filed non-U.S. patent applications.
  • A provisional application is not limiting as to what may be included in a follow-up complete application.
    • Thus, improvements to an invention developed after filing a provisional application may be included in a follow-up complete application (but the priority date for such im-provements is the filing date of the complete application.)
    • In some circumstances, it may be useful to file additional provisional applications for improvements to the original invention, and then combine several provisional applica-tions into one complete application.
  • Potential inventorship issues can be figured out before a follow-up complete application is filed.
  • No Information Disclosure Statements need to be filed for a provisional application.

Drawbacks to filing a provisional application instead of a complete application include the following:

  • In order to save costs, some clients wish to simply file an original client-prepared invention disclosure document as a provisional patent application.
    • However, a provisional application must still provide a basic enabling written descrip-tion of an invention to have any real value as a priority document for a complete appli-cation. More specifically, the written description of an invention must enable a person of ordinary skill in the art to make and use the invention.
    • In many cases, an original invention disclosure document focuses on particular embod-iments of an invention developed to solve a specific problem faced by the client. A pro-visional application based only on such a disclosure may not provide adequate support for claiming an invention in the broadest possible terms.
    • In contrast, when preparing a complete application, original invention disclosure docu-ments are generally fleshed out by a skilled patent practitioner in order to provide broader patent protection.
  • A provisional application is not examined by the USPTO, and accordingly the patenting process will be delayed until filing of a complete application claiming priority to the provisional application.
  • Filing a provisional application starts a one-year clock for filing a complete application in the USPTO claiming priority to the provisional application, and for filing corresponding non-U.S. patent applications. The one-year clock thus constrains further development of the invention that can be included in the follow-up applications.
  • Provisional applications will increase your total costs if followed by a complete application.
    • In the normal case, a patent practitioner would simply prepare and file a complete ap-plication covering an invention, incurring legal costs and standard USPTO filing fees.
    • Under the provisional application process –
      • A provisional application is prepared, incurring some legal costs (the amount depends on the degree of patent practitioner review and preparation) and USPTO filing fees (such fees are lower than for a complete application).
      • Later (usually many months later) a corresponding complete application will be prepared by a patent practitioner, often requiring substantial preparation time (particularly if claims need to be drafted). Because of the delay, a patent practi-tioner generally has to spend time coming back up to speed on the original pro-visional application. The client will incur legal costs for the additional work as well as standard USPTO filing fees for the complete application.

For smaller enterprises and solo inventors, delay of costs is sometimes seen as a big advantage of the provisional application process over the standard patent application process. It is ultimately the client’s decision as to which approach to take to commence protection of an invention. However, filing a potentially deficient provisional patent application to save costs, rather than preparing and filing a complete application, is often a false economy.

John Land is a Partner in Jaquez, Land, Greenhaus & McFarland. He is a graduate of Caltech (BS with Honors 1975) and USC (JD 1978). He practices in the area of patents, copyright law, licensing, and the business problems of technologically-oriented clients.