Provisional Patent Applications

“… and this was, in a nutshell, what I’ve invented.” The Inventor brings up the last slide of her presentation, the one prompting the audience to ask questions. She tugs at a strand of her unkempt genius hair, and a shy smile takes hold of her lips.

Big Boss claps his hands. “Well done. Let’s file a patent application for this.” He eyes the CTO next to him.

The CTO is two-finger typing on his laptop, chewing his lips. His gaze is focused on the screen.

Big Boss prods him.

“Eh… yes?” The CTO looks left and right and finally at his superior.

“Let’s file a patent application for this.” Big Boss points a perfectly manicured finger at the slide that still prompts the audience for questions.

The CTO squints at the prompt. “Okay…” He rubs his chin, the upper one. “Yeah. Okay. I think we should file a?provisional?patent application in this case.”

“A provisional…?” The Inventor tugs some more strands of wild hair, her smile replaced by a frown. “What’s that?”

The CTO glances at his computer, sits straight, squares his shoulders, and takes a deep breath. “A provisional patent application is like a sketch, a preliminary version of a patent application. It doesn’t need to be perfect. And it’s cheaper, too. You file it at the U.S. Patent and Trademark Office. And, within a year, you can then file the regular, non-provisional patent application with all the details, the claims, and the drawings.”

“Oh, this sounds interesting.” The Big Boss nods his head. “Did our patent attorney tell you about that?

“No,” the CTO replies, a proud grin digging into full cheeks. He gestures at his computer. “ChatGPT has told me.”

Big Boss raises a coiffed eyebrow. “I see. Maybe we should ask our patent attorney, then.”

Good idea, Big Boss.

Here’s my take on this — as a patent attorney. As a European patent attorney.

What’s a provisional patent application?

The term “provisional patent application” (I’ll call it “Provisional” in the following) designates a specific form of patent application that can be filed with the United States Patent and Trademark Office (the USPTO). When you file such a Provisional, you get a filing date for what’s described in it, but the application is not examined, and it lapses automatically after a year without ever becoming a granted patent.

If you want to get a real patent, you file, within this one year, a regular patent application (the “Non-Provisional”) and claim the “priority” of the Provisional. If you do that, those claims of the Non-Provisional that were already disclosed in the Provisional will enjoy the (earlier) filing date of the Provisional when assessing their patentability.

Some applicants repeatedly file Provisionals over the first year as the invention evolves, with the final full patent application claiming the priorities of all of them.

What are the advantages of filing a Provisional?

As the CTO in the story above has correctly understood, a provisional is cheaper than a regular U.S. patent application. The fees are lower because the USPTO will not examine it.

Also, since it is not examined, you can basically file anything as a Provisional — even if it describes only part of the invention and has no figures or claims. No examiner will complain.

And, after filing the Provisional, you can advertise your idea with “patent pending” (at least in the U.S. — in other countries, things may be different, but that is not the topic of this article).

Finally, since you file your Non-Provisional about one year later than the (first) Provisional, the patent protection is also extended by that year.

What are the disadvantages of filing a Provisional?

One disadvantage is cost: Even though a Provisional is cheaper, filing a Provisional?and?a subsequent regular patent application is more expensive than filing the regular patent application right from the start.

Another disadvantage — and, in practice, a very important one — lies in overestimating the power of a Provisional. Many patent offices (outside the U.S.) have pretty strict standards as to when the claim of the regular patent application enjoys the priority of the Provisional. For example, at the European Patent Office, priority is only granted if the claim can be “directly and unambiguously” derived from the Provisional. In practice, this is a very high hurdle. Priority is challenging to argue unless the Provisional contains an almost verbatim version of the later claim. In addition, the Provisional must make it clear that this claim can stand by itself (does not require further features) and has a technical effect.

In other words, if you merely file a brief description of an invention, or aspects thereof, without formal claims — a “sketch,” as our CTO has called it — chances that you can validly claim its priority are small, at least in Europe.

Hence, if you just file a quick sketch of your idea, then go and show the invention to third parties not bound by an NDA, and only then file a full follow-up application, you may be in for a surprise: The disclosure to the third party may be counted as a prior art publication against your follow-up application. You won’t be able to patent what you’ve disclosed to the third party.

Where can I file a Provisional?

As mentioned, the term Provisional Patent Application has been coined by U.S. law, and similar legal provisions exist in only a few other countries, e.g., in Australia.

However, any regular patent application can be used for the same purpose. Any patent application will grant you a “priority date” you can use when you file a second (and further) patent application(s) within a year. And, as to costs, a U.S. Provisional comes with an official fee of USD 300 (large entity) or 150 (small entity) while, e.g., the filing fee for a Swiss patent application costs CHF 200, and for a German patent application, the fee is EUR 40.

As to the language of patent application, most patent offices grant a filing date even if the application is not written in an official language. For instance, you can file a patent application in English at the Swiss or German patent office. You will then be prompted to file a translation, but even if you don’t file this translation, the filing date will be granted.

Finally, there are two advantages of filing the first application not in the U.S. but, e.g., in Switzerland, Germany, at the European patent office, or at the international patent office:

• You can request a patent search. This search may give you an idea of whether the patent application is worth prosecuting. And, since the search is subsidized at some of the offices, it is a good bargain.??
• The patent application does not automatically expire after a year (as the U.S. Provisional does), so you may bring it to grant without filing a follow-up application.

Early publishing

Oh, and there's one more thing: early publishing.

Regular patent applications are published only after 18 months from their application date or priority date. In most cases, this added secrecy is a good thing.

However, the delayed publication weakens, in most countries, the effect of your patent application as "prior art" against third-party patent applications. Hence, most patent offices offer the option to publish your application early. This can be a powerful weapon, for example, if you know that your competitor is working on the same technology.

U.S. provisional applications don't have this option.

However, before early-publishing a half-baked, incomplete patent application that you plan to expand upon at the end of the priority year, talk to your patent attorney. The early publication might hurt your later, updated patent application.

So, what are the takeaways?

In short, I’d recommend this:

• If you want to file a “quick” first patent application, don’t rely on a superficial sketch of the idea. At least add a good description and a few claims that stand a chance of granting you priority for later applications, particularly if you’re interested in coverage outside the U.S.
• If you’re not based in the U.S., don’t bother filing a Provisional at the U.S. Patent and Trademark Office. Use your local patent office(s). That’s not more expensive (maybe even cheaper), and it will allow you to get an official search (if you want that), and it will give you a patent application that won’t automatically expire within a year.

Questions, thoughts, critique? Speak out below.

#patents #provisional

Artwork hand-crafted but contains AI-generated wheels and wheel-things