Understanding Provisional Patent Applications

Patent pending imprintA provisional patent application is a quick and relatively inexpensive way to declare an invention as your own. When you submit a provisional patent application to the United States Patent Office (USPTO), you establish what you have invented as well as a filing date. Filing dates are important in patent law because it establishes who created a particular invention first, and subsequently, who has rights to that invention. It may be possible that someone, somewhere, is currently thinking of your same idea! Whoever submits their invention to the USPTO first, and has an earlier filing date, will have first opportunity to get a patent for that invention. Having a provisional patent application also allows you to legally use the term “patent pending” when marketing your idea.

A provisional patent is different from a full patent, known as the non-provisional patent. Filing a non-provisional patent application requires a significantly larger investment in time and money when compared to the provisional. A full non-provisional patent application takes an experienced patent professional a great deal of time to draft correctly. The time required of a patent professional and the time required by the USPTO to process your non-provisional application require you to make a larger financial investment. However, the option of a provisional patent application gives you the benefit of filing your idea quickly and inexpensively, although temporarily. This concept of temporarily is very important. A provisional patent application is only temporary protection because it only lasts for 12 months. To keep your protection after the 12 months, you need to convert the provisional patent application into the full non-provisional patent application. Simply put, the provisional patent application is a temporary place holder, a way to put your foot through the door quickly be establishing your filing date. However, to keep that filing date, the provisional patent application must be converted into a non-provisional patent application before it expires in the 12 months. If you do not convert into a non-provisional and allow the provisional patent application to expire, you will lose your filing date and the provisional patent application will disappear as if you never filed it.

The reason a provisional patent application can be quick and inexpensive is because it requires less time to prepare. One must still disclose all of the details of his or her invention although patent claims, the legal language of a patent, is not required. With less work required, the cost can be reduced substantially. Further, when you submit your provisional patent application to the USPTO, they do not examine your invention. This means that they will not check to see if your invention is actually patentable and meet patenting criteria. The provisional patent application simply serves as a quick and cost effective way to legally file your idea and hold your filing date temporarily. If you file a full non-provisional patent application before the provisional patent application expires, the non-provisional patent application will inherit the filing date of your provisional patent application so that it is as if your non-provisional was filed on the date you filed your provisional.

For simplicity, the rest of this article may refer to the provisional patent application as simply 'provisional patent' and the non-provisional patent application as 'non-provisional patent'.

Let's take a look at an example of how one can use the provisional patent. Let’s say you file a provisional patent on 2/1/2010. It will expire in 12 months on 2/1/2011.

Let’s then say you took your invention to a trade show and a competitor took your idea and filed his own patent application on 3/1/2010. We will label this date as 'Competitor’s Filing Date'.

You can see above that your filing date is 2/1/2010 and the competitor’s date is 3/1/2010 so you are fine being ahead of him in line. The patent office will see that you are first to file a patent application because your date is before the competitor’s date. You will get first chance to get this patent before the competitor can because your date is earlier. However, to keep this 2/1/2010 date, you need to convert the provisional patent into a non-provisional patent before the expiration on 2/1/2011.

Let’s say you convert the provisional patent into a non-provisional patent before the provisional patent application expires. The non-provisional patent gets to inherit the 2/1/2010 date of the provisional patent. You get to keep this date throughout the patenting process. The patent office will see that you filed a non-provisional on 1/31/2011 which was linked to your provisional patent filed on 2/1/2010 and allow you to use the earlire 2/1/2010 date. Subsequently, the patent office will see that you are first in line for a patent as your date of 2/1/2010 is ahead of the competitor's 3/1/2010 date. .

However, if you do not convert your provisional patent into a non-provisional patent before the expiration of the provisional patent on 2/1/2010, the provisional patent will expire and disappear. The result is the loss of your 2/1/2010 date. You could still file the non-provisional patent, but because it is filed after the expiration of the provisional patent, it cannot inherit the date of the provisional patent. In such a situation, the non-provisional patent will simply get the date in which it was filed. For example, let’s say you let your provisional expire on 2/1/2011 and then still proceed to file your non-provisional afterwards on 2/15/2011. The non-provisional can only use the date it was filed which is 2/15/2011 because it can no longer link to your provisional patent which has since expired. The result is this:

As seen above, because you filed the non-provisional patent after the provisional patent expired, the provisional patentdisappeared. You are left with just the non-provisional patent having a filing date of 2/15/2011 which is after the competitor’s 3/1/2010 date. You are now behind the competitor and the competitor is first in line to get the patent.

The conclusion is that a provisional patent application’s protection is 1) temporary, and 2) only useful if you convert the provisional patent into a non-provisional patent before the provisional patent expires. If you let the provisional patent expire, any protection you may have had will expire with that provisional patent. Therefore, it is very important to convert a provisional patent into a non-provisional patent.

A provisional patent application cannot be renewed or extended! If you absolutely cannot convert a provisional patent into a non-provisional patent before it expires, what you could do is re-file a new provisional patent application. However, doing so also has risks because your new provisional patent will give you a new filing date and your old provisional patent's filing date will still continue to expire. Read further on the risks for re-filing a provisional patent application in our article: Can I Renew a Provisional Patent Application?

 

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Updated April 3, 2014