- Provisional Patent Application
- March 9, 2017
- Law Firm: Law Offices of Roland Tong - Irvine Office
Should I file a provisional patent application instead of a regular utility patent application?
Start-up inventors or owners of small technology companies often ask which type of patent application they should file. Provisional or utility patent application? A provisional application generally includes a description of the how the invention is made and how it is used. It may include drawings, which is highly recommended, for the reader to easily comprehend the invention. Unlike a utility application, a claims section is not required. No declaration of inventorship is required, and prior art references known to the inventor need not be submitted.
Provisional applications will get you a patent pending. They are much cheaper in terms of lawyer's fees and filing fees. They preserve your rights by establish your priority over the invention. They are a great way to test the market while preserving your patent rights from public disclosures or events that can bar the invention from getting patented. In some countries that require absolute novelty, a provisional application can shield an invention from losing its novelty. Companies often find themselves needing to show their inventions at trade shows or disclose their invention to business partners or investors, and they often do not have the luxury of time to wait for a utility application to be filed. A provisional application can serve as an excellent tool for companies to get some protection quickly.
However, provisional applications do expire one year from filing. They do not get examined and they do not become patents. A separate utility application has to be filed within one year from filing otherwise all the rights you have tried to protect through the provisional application will be lost. Thus, there is no such thing as a provisional patent.
There is a growing trend wherein the engineers and the scientists try to save some patenting cost especially in these tough economic times by preparing their own provisional applications. In general, these engineers and scientists are the ones who know the most about the invention and may be in the best position to describe the invention. However, with time constraints and pressures of running their businesses, some of them may not thoroughly describe the invention. Some of them may describe the invention narrowly and only include the embodiment they think is the best way of practicing the invention. By doing this, they risk the very foundation of their company. For instance, if the application is not sufficiently detailed, and a patent is issued later claiming priority based on the provisional application, the patent can be challenged for being invalid. The challenger can assert that the issued claims are not supported in the provisional application.
If you have to write a provisional application yourself, It is recommended that you have a colleague review your patent application and tell you whether they can make the invention from reading the disclosure without much experimentation. A better approach would be to find a patent attorney who is willing to review the application and tell you what is missing in your application.