Patent Pending: Knowing When It's Time to File a Provisional Patent

Patent Pending: Knowing When It's Time to File a Provisional Patent

by Michelle Kaminsky, Esq., October 2019

If you're reading this, it's probably because you've come up with an amazing invention that you are sure will become a commercial success. You know that patents protect inventors' rights in their intellectual property, and perhaps you'd like to start down that road to make sure no one else reaps the benefits of all your hard work. Rest assured, you're on the right track. The first place to begin is to understand the basics of provisional patents.

With protection that lasts for a year, a provisional patent acts as a placeholder for a nonprovisional patent, also called a utility patent. Applications for provisional patents aren't reviewed by the United States Patent and Trademark Office (USPTO) examiners, and the description your application contains is a way to mark your territory for the future filing of a nonprovisional patent, which is why you must pay careful attention to all the rules surrounding provisional patents.

Benefits of Filing a Provisional Patent

In the “first to file" patent system, the person who wins the race to the patent office—not necessarily the person who was the first to invent it—is the one who gets to claim rights to an invention. This is why it's crucial to understand the ins and outs of provisional patents and to pinpoint the right time to file one. Other reasons why a provisional patent can be advantageous include:

  • The right to use the term “patent pending." Although these are just two little words, they can hold a lot of sway in your product marketing and development—especially with potential investors. Once you file a provisional patent, you get to attach this phrase to your invention, immediately giving it more credibility.
  • Relative ease and lower cost. While most people would agree that hiring a patent attorney or otherwise receiving professional guidance is advisable for filing a nonprovisional patent application, a provisional patent application isn't as complicated. For one, the application requires only a cover sheet and detailed description of the invention, how it works, and how it is made. Although drawings aren't strictly required, including them can help communicate your invention effectively. A poorly drafted provisional patent application won't do you any favors, so it's critical to pay attention to the application's contents.
  • Additional time for market research and product development. Having a year before you have to file for a nonprovisional patent gives you the opportunity to delve more deeply into the worlds of research and development without losing your place in the patent line. If you wait to file a patent until you have all of your questions answered, you risk missing out on your target market or, even worse, losing the rights to your invention altogether if someone files before you.
  • Deterrent to competitors. If you end up filing a nonprovisional patent, your competitors will be forewarned that if they attempt to copy your invention, they could be infringing on your patent—and that infringement would stem from the date you filed the provisional patent application.
  • Lengthening of patent life. With its extra year of protection, a provisional patent extends the life of an eventually procured nonprovisional patent, which lasts for 20 years from the date of its filing. In other words, your invention would get 21 years' protection instead of 20.

Note that there is no such thing as a provisional patent extension that would further extend the life of a patent: you simply file a new application or move on to a nonprovisional patent application. Also, a provisional patent does not automatically turn into a nonprovisional patent: you must file a separate nonprovisional patent application within 12 months to receive the benefit of the provisional patent application filing date. You may also choose to file another provisional patent application after your initial one expires, but, again, you will have lost the protection of the earlier filing date.

Deciding on the Right Time

If you still aren't sure whether it's the right time to file a provisional patent, you may be concerned that your invention just isn't ready enough. The good news is that your invention doesn't have to be in its final stage to receive a provisional patent. In fact, during your “patent pending" year, you are likely to make improvements on your invention to reflect the market and fill gaps that similar inventions have created.

When you do make changes, you can and should file additional provisional patent applications to reflect those adjustments. The patent system allows you to essentially fold several provisional patent applications into one big nonprovisional patent application, making it easier to protect your invention as you perfect it.

Although filing a provisional patent application isn't as complex as filing a nonprovisional one, you must still be careful to describe your invention sufficiently so that when you do apply for a nonprovisional patent, the examiner recognizes the two inventions are one in the same. That's another reason that you need to be very specific with the details you include in the provisional patent application, or you risk losing the benefit of the earlier filing date.

If you're unsure as to whether it's the right time to pursue a provisional patent, your best bet is to consult a legal professional who specializes in intellectual property law, namely patent law. Remember that even if your invention isn't in its final stage, it's still probably a good idea to get some protection for it—and the way to do that is with a provisional patent application as soon as possible.