Provisional Patent Applications
An Explanation of Provisional Applications and Their Benefits
It is often the case that a sole inventor or business developing a technology has an idea or innovation that is 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 that may occur due to, e.g., 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 filed with the United States Patent and Trademark Office (USPTO) allows the inventor(s) to preserve their 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.
This article explains the requirements and benefits of a provisional patent application for non-attorneys looking for a clearer understanding.
What is a Provisional Patent Application?
A provisional patent application is a form of utility patent application that is filed with the patent office, but is not examined to determine patentability of the invention described in the provisional application. The provisional application is an initial filing to establish a priority filing date so that the USPTO has a record that the named inventor(s) invented the technology described in the provisional application as of that filing date. A provisional application will not itself issue as a granted patent. It is a kind of placeholder for a to-be-filed non-provisional patent application.
The provisional patent application does not have to include all of the formal requirements of a non- provisional patent application, such as a formal patent claim or an
abstract. A written description of the invention and supporting drawings are passable for a provisional application. However, it is best to prepare a provisional application that is as complete as possible. A spare or weak provisional application may result in the corresponding non-provisional application losing its priority date.
A complete patent application is preferable because the nonprovisional application that is eventually filed and that will claim priority to the provisional application must be supported with enough detail by the provisional patent application to demonstrate that the inventor fully possessed the invention as of the provisional filing date. Also, the provisional must not only adequately describe the claimed invention and
enable a person of ordinary skill to make and use it without undue experimentation. More specifically, the patent claims in the non-provisional application must be sufficiently described to convince the USPTO that the inventor had fully conceived the claimed invention as of the earliest filing date asserted in the non provisional application (i.e., the filing date of the provisional application).
A Provisional Patent Application has a 12-month Pendency
Once the provisional patent application is filed, the inventor has 12 months to file a non-provisional application claiming the benefit of the provisional filing date (“claiming priority”). The non provisional application must be filed within 12 months of the provisional filing date in order to retain the benefit of the original filing date. As the inventor further develops the invention (e.g., adds further or alternative embodiments and implementations), additional provisional applications can be filed to protect any additional innovations at the earliest possible time.
Concurrent Provisional Patent Applications
Multiple provisional patent applications are filed for the same technology, if there is ongoing development and design of the technology that leads to additional and/or improved features and functions. If the patent applicant files multiple, concurrent provisional patent applications for the same technology, their disclosures can all be included in the same non provisional patent application. In such a case, the non-provisional application would claim priority to each of the concurrent provisional patent applications. However, it should be noted that subject matter added to the later filed provisional patent applications or the corresponding non-provisional patent application may not get the benefit of the initial filing. The non-provisional patent applications may include some claims that are supported by the disclosure of the original provisional application, and some that are supported only by a later provisional filing. In such cases, the claims would have different priority dates depending on which of the concurrent provisional patent applications supports the particular patent claim.
Filing a Provisional Patent Application Establishes "patent pending"
The provisional patent application is a handy tool for securing
utility patent rights early in the development of a technology. US patent law changed in 2013 with the
America Invents Act, which established 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 with the patent office has the better rights to the invention. Thus, early filing of a provisional patent application is an important step in protecting rights in an invention, and establishes “
patent pending” status for the invention. Patent pending can be established with a provisional patent filing, or any other patent filing.
Patent pending status allows the patent applicant to mark any prototypes, literature relating to the invention, or a product or service featuring the invention as patent pending as a warning to any would-be copiers or infringers. 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.
Public Disclosure and Grace Period for Filing a Utility Patent Application
A provisional patent application also protects the inventor from situations where there is an upcoming imminent disclosure of the invention to be made (e.g., on a website or other media) to announce and/or promote the invention, the inventor, and the company for which they work. Such disclosures can negatively affect the right to pursue a patent in the US and in other countries. There is a 12-month grace period in the US to file a utility patent application after a public disclosure of the invention by the inventor or related party. A patent application must be filed by the expiration of the grace period, or the patent rights may be lost.
Some foreign countries also have a grace period, e.g., Canada, Australia, Mexico, and several other countries have a 12-month grace period, and the Chile and a 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. Thus, an early priority date can protect against the risk of losing rights in the invention.
Provisional Patent Applications Defer Examination and Costs
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 Pendency of a Provisional Patent Application Does Not Reduce the Patent Term of a Non-Provisional Patent Application
The 12-month provisional period also has the benefit of not counting against the utility 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 an early effective filing date that can be a full year before the term of the patent begins. Provisional patent applications are quite valuable in many situations, such as when the invention is still in development, additional funding is required, or other circumstances make a provisional application advantageous. Provisional patent applications should always be considered as an option when one is seeking patent protection.
Are Provisional Patent Applications Published?
A provisional patent application is not published and maintains the secrecy of the disclosed technology. 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 patent application by filing a non-publication request in the non-provisional application. If the non-publication request is filed, the invention will only be made public by the patent office if and when a utility patent is granted. Thus, a provisional application provides an excellent tool for establishing a foothold for establishing patent protection, while maintaining the secrecy of the invention and the available protections of trade secret law.
Provisional Patent Applications Are a Strategic Tool for Patent Protection
Provisional patent applications allow you to establish a filing date and secure early protection for your innovation. Provisional patent applications can be used as part of a patent strategy for establishing the earliest priority dates for your inventions. Although a provisional filing does not itself provide the enforceable legal protection of a full patent, it can preserve an earlier date if the subject matter is adequately disclosed and described. It is critical to prepare a complete application with sufficient technical details to describe and explain how to practice the particular invention. Formal claims are not required, but a detailed description of the invention and all alternative embodiments should be included to the extent possible at the time of filing. A later nonprovisional patent application can benefit from the original provisional filing only to the extent that its claimed invention is adequately supported by that disclosure.
With an upfront lower cost and deferred examination expenses, provisional filing can be a cost-effective way to begin the patent process while evaluating commercial potential, refining the technology, and pursuing funding. Establishing patent pending status during the provisional period can also provide a competitive advantage as the invention moves toward commercialization. Patent pending markings on early versions of the invention and the literature and promotional materials relating to the invention can provide a signal to the public that the invention is your innovation and a warning to potential competitors that they may face legal action if they pursue knock-off products or methods. Combining early filing, thorough disclosure, and timely follow-through in your provisional application filings can optimize your patent rights and lead to a strong issued patent.
It is recommended that a prior art search and
patentability analysis on the invention is conducted as early as possible, preferably before the provisional patent application is filed. It is also recommended that you conduct a
freedom to operate search to find possible infringement problems. You want to know at an early point whether the invention is going to be protectable and whether making the invention will infringe someone else's
patent before committing the development of the invention for commercialization.
Our Experienced Patent Attorneys Can Assist you with Filing a Provisional Application and Establishing a Filing Date
© 2021, 2026 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
