About US Provisional Applications

Provisional applications for a patent are not examined, so they cost less to file. To get actual coverage from a provisional filing, during the one year after filing, the applicant has to either file a regular utility application claiming the priority of the provisional case, or convert the provisional application to a regular one.

A provisional application is occasionally a good patent tactic. Usually it is not. A US inventor should consider a provisional filing if both of the following conditions are met::

1) there is an urgent deadline for putting the product on the market or publishing a technical description of it; and

2) foreign patent applications will probably be filed if the new product is successful.

In these cases, a provisional can "buy time" to test the market, do a patent search, and generally to see if the invention is worth patenting. US patent laws have always allowed an inventor a grace period in which to file a patent application after the product has been offered for sale or after it has been publicly disclosed, but other countries generally do not provide a grace period. Part of Congress' reasoning for setting up the provisional was that it could be used to extend the same grace period to other countries.

There are several traps for the unwary built into the provisional application:

• There is a temptation to file too soon, or to file an overly brief description. If the application fails to describe the invention in enough detail that someone "ordinarily skilled in the art" can use the application's description to practice the invention "without undue experimentation", it does not offer any protection whatever. This is the same standard applied to regular applications. Because the law requires this level of completeness, anyone who is ready to file a provisional application is also ready to file a regular utility application.

• The high costs of foreign filings may have to be faced earlier in the process. If international coverage is desired, but there are no immediate deadlines looming, one is almost always better off filing a regular application and hoping that the Patent Office starts the examination during the first year. With some luck, one can get the benefit of an Examiner's search and evaluation before having to file equivalent foreign applications or an international application.

• The good arguments for filing provisionally are all predicated on your being in a rush. So, how do you minimize the risk of failing to provide an adequate disclosure of the invention? One approach is to figure that a provisional is going to be less well organized than the regular application that follows it. This means that the provisional should be bigger – NOT smaller. It will have more drawing figures. Not fewer. Good organization lets one cut down the size of a document. Haste requires either discarding material (a potentially fatal choice), or putting in everything that’s on hand.