What is a provisional patent application?

A provisional patent application is a type of patent application, and additional steps are required before a patent can be granted for the invention it describes. However, a provisional application provides a lot of bang for the buck. Every inventor, from the cash-strapped garage inventor to the multinational company, can use provisional patent applications as part of their innovation strategy.

In the race from idea to invention to product, other inventors are likely present. For years, the U.S. was a first-to-invent system, meaning if two applicants filed for patents at the same time, the one able to prove earliest inventorship would win. However, the U.S. is now a first-to-file system, meaning the first inventor to file a patent application will prevail, so filing as soon as you have an invention is vital. Because filing requirements are minimal, a provisional application can be filed quickly, earning you a filing date and the ability to describe your invention as “patent pending.”

No later than one year from the filing date, the provisional application must convert to a utility application to keep it moving toward a granted patent. Unlike a provisional application, the USPTO has strict standards for formatting, drawings, and claim language of utility applications. A provisional application remains non-public during its life, and is not examined by the USPTO to determine if the invention is patentable. Only after filing a utility application is your application examined by the USPTO for patentability.

In a provisional patent application describe exactly how to make and use the invention. Don’t assume that the reader will fill in the gaps; describe everything in detail.

If your invention is a machine, device, or other physical thing, then describe all the parts in detail. What does each part look like? What is the purpose of each part? What materials can each part be made of? How does each part connect to other parts? What’s the best way to build the invention? What other ways can it be made? Include drawings that show all the parts and how they connect. Also describe how someone would use your invention step by step, tying each step to the parts involved in making that step happen.

If your invention is a method, describe the of equipment that is needed to implement the method. Include a drawing of that equipment. Describe the method step by step, indicating what equipment is involved in making each step happen. Include flowcharts showing the steps.

Include in your application all your ideas of how to solve the problem the invention is addressing. Including many ideas creates options for later use. When converting the provisional to a utility you’ll be able to draw any idea that was in the provisional application into the utility application and keep the earliest date. New material can be added when the utility application is filed, but if not supported by the provisional application, a later date may be assigned to the new ideas. When converting the provisional to a utility application, that is your last chance to add new material. If you want to add something new to a utility application later, you will have to file a separate application and pay the utility filing fees again.

Hand-drawn figures and photographs are fine in a provisional application. Professionally drafted drawings look fantastic but are not mandatory. Just make sure each drawing is neatly done (no copier marks or visible erasures) and that a low-quality copier could clearly reproduce the drawing.

You may have heard stories of ideas sketched on napkins and filed as provisional applications or “coversheet provisionals” in which academic papers are filed with a provisional coversheet. While the USPTO will accept such applications, this is a last resort. The best practice is to file the most complete application allowed by time and finances.

The table below provides a brief overview of patent document types

Key featureProvisional applicationUtility applicationGranted utility patent
Publication dateDoes not publishTypically publishes 18 months after filingPublishes at issue date
Life expectancyOne year from filing dateRemains pending until granted or abandonedGenerally, 20 years from application filing date (ask a patent attorney for details)
Additional requirementsNot reviewed for patentabilityCan’t be used for design patentsStrict formatting, drawing, and claim language requirementsRigorously reviewed for patentabilityMust pay three sets of maintenance fees to keep the patent alive
Overview of patent document types

Next steps

While an optional step towards a granted patent, a provisional patent application can secure you an earlier filing date while leaving options for refining the invention and delaying the expense of a utility application. This is a powerful tool provided by the USPTO!

Continue learning about provisional patent applications with: When should I file a provisional patent application? and What does a provisional patent application cost?

Contact me for help developing the right intellectual property strategy. I have been registered to practice before the USPTO since 2007. Before then, I was a systems and hardware engineer at a large precision agriculture company. I’ve walked the walk, combining experiences of designing products, drafting and prosecuting many patent applications, negotiating many contracts, and operating my own business.

To discuss intellectual property strategies for your inventions, contact me at 515-727-1633 or melinda@vanderveldenlawfirm.com.

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Disclosure and limitation: This guide is for informational purposes only. The contents of this guide are not legal advice, and no attorney client relationship has been formed.