When should I consider a provisional application?
Imminent public disclosure: It’s best to have a patent application on file before talking to a third party about or offering the invention for sale. If you have a meeting scheduled and don’t have time to get an application together or otherwise aren’t ready to do a utility application, then a provisional is a good choice.
Past public disclosure or offer for sale: If you have already offered your invention for sale or had another public disclosure, contact a patent attorney or agent right away! That disclosure created a filing deadline, and if you wait too long you will miss the chance to apply for a patent. A provisional application can be used to get an application on file quickly when there is an imminent deadline.
Deferring costs: A provisional application gets you a filing date, but there is still effort and expense in store before you get a patent certificate. A provisional application won’t save money in the long run since the utility filing fees will ultimately need to be paid, but it does defer costs while you are marketing the invention or seeking funding to develop it further.
Ongoing development: It is permissible to add content to the application when the provisional application is converted to a utility application. Once a utility application is filed, no new matter can be added without filing a new application. If the invention is close but small adjustments are still being made, a provisional is a good choice.
You’re not in a hurry: Provisional applications are not examined, and they remain non-public during their pendency. If you want to get a patent as quickly as possible or publish the application quickly, then filing as a utility application may be a better option.
Matter of course: Some applicants initially file their applications as provisionals as a matter of course. If no additional development has occurred since the provisional application was filed and the application meets all the requirements for a utility filing, then the provisional application can be filed as a utility application with no changes. However, in my experience there are always updates. Inventors never stop inventing, and improve the invention during the year. If there are significant improvements, you can file additional provisional applications during the year and combine them when the utility application is filed.
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 What is 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.
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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.