When you’re considering seeking patent protection for your invention in the United States, there are generally three types of patent applications you’ll consider: utility, design, or provisional.1There is a fourth, a Plant patent application. Plant Patents enable inventors who have invented or discovered and asexually reproduced a certain distinct and new variety of plant to protect it, but these are very uncommon compared to the other three. As covered elsewhere, a utility patent is for a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, and a design patent is for a new, original, and ornamental design for an article of manufacture. Utility and design patents grant owners an effective monopoly on the claimed invention for a limited term. Provisional patent applications were introduced in the United States in 1995.
So, what is a “provisional patent”?
To start off, even though it’s extremely common to hear, calling it a “provisional patent” is inaccurate. A provisional patent application is not examined by the patent office, and it cannot by itself mature into an enforceable patent. It remains only an application. This is why it’s accurately called a “provisional patent application,” or, for those who don’t like to speak in tongue twisters, a “provisional application.” A provisional application is considered pending for one year, after which it is automatically abandoned. This may initially seem unhelpful.
However, provisional applications can provide immense value as part of an overall patent strategy. Some of the highlights include:
- A provisional application can be the basis of filing a full utility application within a year of filing the provisional application.2A design patent application cannot claim direct priority to a provisional patent application.
- Unless another has already filed, filing a provisional application wins the race to the patent office3As of March 16, 2013, the U.S. patent system awards patents on a “first-to-file” basis rather than “first-to-invent.”, as it secures an effective filing date.
- Public disclosures after this effective filing date by the applicant or by others—so long as the subject matter is covered in the provisional application—should not affect the patentability of the invention.4Please note, there are certain exceptions to this rule, including for patent applications having an earlier effectively filed date published after the effective filing date of the provisional patent applications.
- The time the provisional application is pending does not count toward the 20-year term of a later-filed utility patent.5See 35 U.S.C. §154(a)(3). This can effectively extend the end date of any later-granted patent term to 21 years from the effective filing date of the provisional application.
- Like utility and design applications, once filed, an invention covered in a provisional application becomes—and can be legally labeled and marketed as—”patent pending.”6Many don’t realize it’s a federal offense to label a product or service as “patent pending” if no application has been filed. See 35 U.S.C. §292. This offense can carry up to a $500 fine for every offense. Id.
- An international patent application can be filed based on a U.S. provisional application—thus, a provisional application can provide an ability to delay the decision to file an international patent application for up to a year without loss-of-right. This is particularly advantageous to startups unsure of their target markets at the stage they need to file a patent application.
- Finally, from a business standpoint, filing a provisional application delays examination costs and offers up to a year to market, test, refine, sell, discuss, or “hype up” the covered invention while having a secured effective filing date—these activities would not be used to reject the full utility patent application claiming benefit of the provisional application’s filing date.
A provisional application shouldn’t be viewed as a one-page patent application or something along those lines. Similar to a full utility application, its value includes the quality of its disclosure. To be able to later avail oneself of the provisional application’s filing date, inter alia, it must disclose the invention sufficiently to support a later full utility patent application.
Thus, provisional patent applications can provide significant business value even if they can’t by themselves mature into a granted patent.