A 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 essentially 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.
For brevity, this post may refer to a provisional patent application as simply a ‘provisional patent’ although the full proper name is ‘provisional patent application’. This is because a provisional patent application is not yet a patent, explained further in this post.
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 patent application. A full non-provisional patent application takes an experienced patent professional a great deal of time to draft. Further, the services of an engineer in the field of the invention and artists who can draw patent drawings are often further utilized. The extensive time required to prepare the application results in the higher cost needed to have the application prepared. 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 temporary because it only lasts for 12 months. Before the 12 months are up, you need to convert the provisional patent application into the full non-provisional patent application to keep the original filing date. Put another way, the provisional patent application is a temporary place holder, a way to get your foot through the door with the Patent Office quickly by telling the Patent Office that you have invented something on the date you filed the application. However, to keep the 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 it into a non-provisional application 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. If you were previously in front of someone in line, by losing the date, you could now end up behind someone in line. Whereas you previously were first in line to get a patent for the invention, you end up behind someone else, since your original filing date was lost when you failed to convert the provisional patent application into a non-provisional patent application.
The reason a provisional patent application can be quicker and less expensive when compared to a non-provisional application is because it generally 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 full non-provisional patent, is not required. With less work required, the cost can be generally reduced. Further, when you submit your provisional patent application to the US Patent Office, they do not examine your invention. This means that they will not check to see if your invention is actually patentable and meet patenting critera. The provisional patent application simply acts as a placeholder to 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. Only then, when you file the non-provisional patent application, will the US Patent Office examine your patent application and determine if you are eligible for a patent based on the patentability criteria.
Let’s take a look at an example of how one can use the provisional patent. For brevity, I refer to a provisional patent application as simply ‘provisional patent’ and non-provisional patent application as ‘non-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 earlier 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 patent disappeared. 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 timely convert a provisional patent into a non-provisional patent.
Note that a provisional patent application cannot be renewed. If you do not convert it into a non-provisional patent before it expires, it will disappear forever. It is possible to extend it 18 months with a PCT Patent Application, but it is costly to do so. If you absolutely cannot convert a provisional patent into a non-provisional patent or extend it with a PCT Patent Application before it expires, what you could do is re-file a new provisional patent application. However, doing so 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 more about this concept in: Can I Renew a Provisional Patent Application?
Finally, it is important to note that a provisional patent application is not yet a patent and you do not have the right to sue someone for making or selling your invention. Only when a non-provisional patent application is filed and approved by the US Patent Office do you have full patent rights, and the right to sue someone for making or selling your invention. While you only have a provisional patent application, you have simply reserved your place in line at the Patent Office and secured your filing date. That filing date can be used if and only if you convert to a non-provisional provisional patent application before the provisional patent application expires. If converted, the non-provisional patent application inherits the filing date of the provisional patent application. Finally, if the non-provisional patent application gets approved by the US Patent Office, then and only then do you have full patent rights and the right to stop others from making and selling your invention.