Provisional Applications for a Patent and Their Cost

Posted Saturday, June 02, 2012.

The USPTO permits inventors to file a special type of application for a patent which is called a provisional application. Many inventors are aware of the provisional application, primarily because of its lower cost. A provisional application might possibly be filed less expensively than the regular (“non-provisional”) application. However, it is crucial to understand exactly what you are getting when a provisional application is filed. The old adage “you get what you pay for” applies.

What many do not realize is that the formal requirements for a provisional requirement are virtually the same as for a non-provisional application. By the letter of the law, the provisional application lacks the patent claims, but all other aspects of a non-provisional application are required to be present in the provisional application.

The thing is, when a provisional application is filed at the USPTO, it goes into storage and is almost never examined. The only time a provisional application is considered by a patent examiner is when there is another invention disclosure of which the examiner is aware that was filed between the filing of the provisional application and the filing of the non-provisional application.

Knowing that there is a possibility that a provisional application will never be examined, some may be tempted to file a very thin disclosure that is very inexpensive to prepare to acquire the early filing date a provisional application provides. I have heard stories of an inventor scribbling an idea on a cocktail napkin, sticking a provisional application coversheet on it, and filing that to get a filing date. It’s cheap to prepare, right? And after all, you have a year from the time you do that to get the non-provisional on file, so you could save the money for the non-provisional to be drafted in the meantime.

The problem is that if your provisional application is actually needed once your non-provisional is on file and examined, and what you have filed for a provisional application is inadequate in one way or another, you lose the priority date from your provisional application.

How likely is it that a provisional application will actually be considered? It depends on so many factors that it is impossible to provide a rule of thumb. The absolute safest route for a provisional application is to go into it prepared to offer as complete a disclosure as you can, almost to the point that it is a non-provisional application.

Now, the patent claims are one of the more difficult (if not the most difficult) elements of the application to prepare, so it is true that by not being required to draft patent claims, a provisional may be less expensive than a non-provisional to have prepared. But for those who are tempted to file a very thin disclosure for a provisional application because they are attracted by a very low rate for preparation, do so at your own peril. Understand the risk, which is that if that provisional application does get looked at and the aspect of your invention is not described sufficiently in the provisional application for the examiner’s taste, your provisional application will not be of any value.

So, you get what you pay for. A cut-rate price for preparation of a provisional application might seem attractive. Understanding what you are actually getting for that rate, though, is critical. The process of acquiring a patent is long, and you don’t want to find out four years from now that the rock-bottom priced provisional application you had filed is being removed from consideration by a patent examiner because it was inadequate.

One quick additional thought: a strategy I sometimes recommend to my clients is to file two provisional applications. You might do this where time is of the essence. For example, you got started on the patent process too late, and are meeting with the patent attorney or patent agent for the first time the day before the product is about to be announced. In that case, you absolutely want some protection of your intellectual property before the announcement (particularly if you are considering patents in countries in addition to the US).

In that situation, I’ll take whatever you have in writing about the invention and stick a cover sheet on it and file it as a provisional application, because there’s no time to do the job correctly but it’s better than nothing (in fact, it’s essential). Then, I would follow this up with a proper application that is more fully compliant with the requirements for a provisional app. That way, you hopefully have the filing date from the first application, but if the examiner refuses to consider it, at least you have the filing date from the second one to claim as your priority date.

Also, if you filed a provisional application on your own but weren’t aware of the formal requirements for a provisional, it is a good idea to have a registered patent professional follow up your filing with a second provisional application. If you overlooked something in your own filing, the second provisional prepared by a professional is good insurance.

In short, many are aware of the provisional application for a patent. However, most are focused on their lower-cost without understanding the nuances or what one actually gets with a provisional filing. It’s critical to understand the bigger picture. What should come as no surprise to anyone, however, is that you get exactly what you pay for (and sometimes even less than what you paid for).

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