See more posts by this author: Kameron W. Kramer
“One thing of late that I seem to be recommending more and more to potential inventors are provisional patent applications.”
A provisional patent application is essentially a placeholder. The provisional patent application is never examined by the United States Patent and Trademark Office (USPTO). You file the application, and then you have one year in which to either file a utility patent application or simply let the provisional patent application expire. You can also re-file the provisional one day after the original provisional expires. Essentially, when you file a provisional patent application, you are protected for one year while you continue to work on the utility patent application.
There are some benefits in proceeding in this manner.
Since a provisional patent application is never granted, the requirements are not nearly as strict as with utility patent applications. With the utility patent application, the drawing requirements, the specification requirements, and the claims are stricter, requiring careful drafting, while a provisional patent application only requires a specification, and claims are not necessary. Therefore, you can prepare and file a provisional patent application for much, much less than a utility patent application. As an example, I have seen some universities simply prepare cover sheets for peer-reviewed articles and file those as provisional patent applications.
The question remains, why would anyone want to file a provisional patent application?
The answer is that it is a placeholder and, because it requires much less money to prepare and file, I recommend it to smaller companies and solo inventors as a way of security patent pending status for the least amount of money while they attempt to market the product over the next year. To get a utility patent granted, it can cost anywhere from $5,000 on the very low end to $20,000 for a fairly simple patent. By filing a provisional patent application, you can spend the least amount of money to protect your product and look for potential investors in the next year.
If you are successful in securing funding, you can then proceed with the utility patent application or, if no funding is available, you can just let the provision expire at that point. Therefore, the provisional patent application is the least expensive way to protect your product while trying to secure funding.
The answer is that it is a placeholder and, because it requires much less money to prepare and file, I recommend it to smaller companies and solo inventors as a way of security patent pending status for the least amount of money while they attempt to market the product over the next year.
Rejections based on obviousness and novelties are the most common rejections from the USPTO. Essentially, every patent filed initially is rejected. Typically, the USPTO will say that the invention is obvious in light of another patent. One way to overcome an obviousness rejection is to demonstrate commercial success. Therefore, by filing a provisional patent application on something someone fears may be rejected for an obviousness rejection, you can then explore the possibility of commercial success, so that if and when you do file the utility patent application, if it has been rejected for an obviousness rejection, you already have marketability numbers to back up your conclusion that it is not obvious.
Issues with provisional patent applications.
However, there are some problems with provisional patent applications, the chief problem being the lack of disclosure many applicants actually put in the provisional patent application. Since less disclosure is required, many applicants simply do not put enough in the specifications and, therefore, the provisional is not actually enabling, and if they try to get a utility patent application, their idea is actually not protected under the provisional when they try to claim priority back to the provisional date. Consequently, inventors may think their product was covered under the provisional when in actuality it was not because they did not claim it properly.
In order to avoid that problem, you must balance disclosing enough without disclosing as much as is required for a utility patent application.
So, you must walk a fine line and disclose just enough. An experienced patent attorney is able to assist in that regard to avoid most of those difficulties and write the provisional patent application in order to have a good starting point for the utility patent application if you decide to proceed at that point. For that reason, a provisional patent application is something that the small inventor should strongly consider when beginning the patent process.