Patent Primer

What is a provisional patent application?

A provisional patent application is not equivalent to filing a regular patent application. It is essentially a placeholder that gives an applicant one year to file a regular patent application.  If no regular patent application is filed within that one-year period, the provisional application simply expires.  However, if a regular patent application is filed within that one-year period properly claiming the benefit of the provisional application, then the date of filing the provisional patent application can establish a priority date for subject matter that is fully disclosed in the provisional patent application.

Why file a provisional patent application?

  • Longer patent term.
    The term of a patent is calculated based on the filing date of a regular application. A provisional patent application is not counted in this period and can effectively provide an extra year of patent protection. This may be particularly important for inventions such as pharmaceuticals that are most valuable towards the end of their patent term.
  • Defer patent costs.
    By filing a provisional patent application, you can defer some costs for up to a year, but you do not ultimately reduce costs. The professional fees for preparing a provisional patent specification and drawings may be lower than the fees for preparing a non-provisional patent application. This is because a provisional application is not required to include many components, such as a formal set of patent claims, information disclosure statement, and an oath or declaration, which are required for a non-provisional application. However, to obtain any enforceable legal rights, you will eventually incur the full cost of filing and prosecuting a non-provisional patent application, including preparing a comprehensive description of the invention and claims.
  • Provide more time to develop an invention or collect data.
    A provisional patent application can enable immediate commercial promotion of an invention by authorizing the use of “Patent Pending”. It can also allow time to further develop a product or to obtain additional supporting data, which can be particularly important in the chemical and biotechnology fields. The filing of multiple provisional patent applications over the course of the one-year pendency of the provisional application can allow companies to set down incremental priority dates as new improvements are made or as further supporting data is collected, and thus can be an important part of an overall filing strategy.

Are there any downsides to filing a provisional patent application?

  • Improvements may not be protectable.
    A provisional patent application sets a priority date only for subject matter that has been fully disclosed in the provisional application. As shown below, this priority date will not apply to changes or improvements not disclosed in the provisional application. If the invention is publicly disclosed after the filing date of the provisional application but before the filing of a regular application, that public disclosure will become prior art against claims including those changes or improvements in absolute novelty jurisdictions (such as Europe and China), which may render claims covering the changes or improvements invalid in those countries.  You should seek professional advice prior to disclosing your invention if a provisional patent application has been filed and further changes or improvements to the invention are contemplated.

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  • Provisional patent application may not enable the claimed subject matter.
    Sometimes provisional patent applications are filed before much data has been collected.  If the data in the provisional patent application is determined to be insufficient to enable the claimed invention, the claims may not be entitled to the benefit of priority of the provisional patent application.
  • Overall cost will be higher.
    Because a regular patent application must be filed within one year for a provisional patent application to have any value, you will ultimately incur the costs of filing both the provisional and regular applications.

Weighing the risks and benefits of provisional patent applications

Overall, provisional patent applications are a valuable strategic tool in obtaining patent protection.  The implementation of the Leahy-Smith America Invents Act in the United States in 2011 changed its patent system from first-to-invent to a first-to-file. This change has increased the importance of provisional patent applications. A properly drafted provisional application may be the quickest method to obtain the earliest possible priority date for an invention.  In some cases, particularly involving disclosure to or joint development with third parties, a brief provisional patent application can be better than no filing at all.  However, in all cases, the provisional patent application should form part of a comprehensive patent strategy, not an end unto itself.