Provisional Patent Applications - 
A discussion by Patent Attorneys

It is often the case that a sole inventor or business developing a technology has an idea or innovation that sufficiently developed that it works in principle, but it may not be ready for implementation or may not be ready for the marketplace. For example, an inventor may have developed a new chemical composition for a fertilizer that is effective in laboratory or field test settings, but may not have a final formulation with optimized concentrations of active ingredients. At such a stage it is imperative that the inventor protect the innovation by filing a patent application to prevent a loss of rights due an inadvertent disclosure of the invention, independent development by a third party, industrial espionage, or other risks to the patent rights in the invention. However, because the invention is still at a developmental stage the inventor may make further discoveries and refinements to the invention. In such situations, a provisional patent application allows the inventor(s) to secure the patent rights at this early stage and still provide the inventor with the flexibility to update and change the description of the invention prior to filing a non-provisional application that will be examined by the patent office.

Provisional patent applications are handy tools for securing patent rights early in the development of a technology. Since the American Invents Act came into effect in 2013, the US is a “first-to-file” jurisdiction, meaning that it does not matter who first invented a technology, the first person to file a patent application has the better rights to the invention. Thus, early filing of a provisional is an important step in protecting patent rights in an invention, and establishes “patent pending” status for the invention. Early filing also protects the inventor in scenarios in which the invention is in a quickly developing field of technology and it is likely that multiple inventors are working on the same problem and may independently develop the same invention. It also protects the inventor from situations where a public disclosure of the invention is made (e.g., on a website, a research paper, or other media) to promote the invention, the inventor, and/or the company for which they work. Such disclosures can negatively affect patent rights in the US and in other countries. There is a 12-month grace period in the US to file a patent application after a public disclosure of the invention by the inventor or related party. Some foreign countries also have a grace period, e.g., Canada, Australia and several other countries have a 12-month grace period, and the Russian Federation and few other countries have a 6-month grace period. However, many foreign countries have no grace period (e.g., Europe and China have no grace period except under special circumstances), and thus a public disclosure immediately forfeits patent rights in such countries, if no patent application has been filed and regardless of where the disclosure was made.

A provisional patent application also maintains the secrecy of the invention. Provisional patent applications are not published. Thus, the inventor can maintain the invention as confidential and as a trade secret during the pendency of the provisional application, thereby preserving the protections of trade secret law. Additionally, the secrecy of the invention may be maintained after filing the non-provisional application by filing a non-publication request. If the non-publication request is filed, the invention will only be made public by the patent office if and when a patent is granted and issued on the invention. Thus, a provisional application provides an excellent tool for establishing a foothold in patent rights, while maintaining the secrecy of the invention and the available protections of trade secret law.

Once the provisional application is filed, the inventor has 12 months to file a non-provisional application claiming the benefit of the provisional patent application filing date (“claiming priority”). As the inventor further develops the invention (e.g., adds further embodiments and implementations), additional provisional applications can be filed to protect any additional innovations at the earliest possible time. If multiple provisional applications are filed, they can all be swept into the same non-provisional application, with the non-provisional application claiming priority to each of the provisional applications.

Provisional applications also offer the benefit of deferring the higher filing fees of non-provisional patent applications and the costs associated with the examination process. The filing fees for the non-provisional application are at least several hundred dollars more than the filing fees for a provisional application. The costs of examination are highly variable, but are usually significant. The provisional patent application pushes the higher costs of the non-provisional application out by up to twelve months, which makes sense in situations where the invention has not yet been demonstrated to be efficiently produced, industry or consumer interest in the invention has not yet been established, or funding and investment in the development of the invention is still needed.

The 12-month provisional period also has the benefit of not counting against the patent term if a patent eventually issues. The term for a utility patent is twenty years from the filing date of the non-provisional patent application, and the twelve-month provisional period does not eat into that twenty-year term. Thus, the provisional patent application provides a patent priority date that can be a full year before the term of the patent begins. Provisional patent applications are quite valuable in many situations, whether the invention is still in development, additional funding is required, or other circumstances. Provisional applications should always be considered as an option when one is seeking patent protection.