What is a provisional patent application and how can I file for one in New York state

Provisional patent applications can be a danger zone for non-patent attorneys to file. A provisional patent application gives the applicant priority for 365 days for only so much of an invention that is properly disclosed. An invention is only properly disclosed if the claims that are later examined, i.e., in a nonprovisional patent application, are "enabled" by the provisional patent application. "Enabled" means it explains how to make and use the invention from the perspective of one of ordinary skill in the particular field of endeavor to which the invention relates.

The danger comes because most non-patent attorneys/non-patent agents don't know how to file a complete enabling disclosure. If that earlier priority date is needed, for a host of possible reasons, and the provisional patent application does not disclose enough to be enabling, the priority date is, to that extent, non-existent and the applicant has lost potentially valuable patent rights, possibly even all patent rights. Doing a provisional patent application correctly generally does not save on the patent attorney or patent agent fees, since the attorney or agent will be thorough. The only savings, and that for only a year, are reduced filing fees.

The Patent Office doesn't do anything with the provisional patent application, and if a non-provisional patent application is not filed within 365 days, the application is abandoned and the priority date is lost. Provisional patent applications done cheaply are a perfect example of the adage "you get what you pay for." In this case, possibly even less then you pay for. Anyone who believes they have an invention of any value is stridently urged to contact a patent attorney, or at least a patent agent, to either file a provisional patent application for them, or at least to review the provisional patent application that will be filed.

One advantage to a provisional patent application is that you can file more than one during the 365 day period as you come up with further modifications and improvements to your invention. These provisional applications can then be filed in one overriding nonprovisional application at the end of the 365 day period from when the first provisional patent application was filed.

A provisional patent application is a low-cost "placeholder" in the US patent office. It establishes proof that you owned the invention at the time you filed it. Within a year, you file a non-provisional patent application that is based on the provisional. The non-provisional is your "real" application. The non-provisional gets examined by an examiner, and eventually can issue as a patent. The provisional patent application on the other hand is never examined.

Your provisional patent application should be AS CLOSE to a complete, final draft of a non-provisional as possible. This is for the reasons mentioned above by other posters - i.e., an incomplete provisional application may buy you no protection.

You should also ask yourself why you want to file a provisional patent application as opposed to just going ahead with a non-provisional. The following are some of the reasons provided by the USPTO for filing a provisional first:

# Provides simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;
# Establishes an official United States patent application filing date for the invention;
# Permits 12 month ’s authorization to use "Patent Pending" notice in connection with the description of the invention;
# Enables immediate commercial promotion of the invention with greater security against having the invention stolen;

Learn more at the USPTO's website.


**This post does not constitute legal advice, nor does it create any attorney-client relationship between Sadiq Ansari and any other individual or entity.**

Since 1995, the United States Patent and Trademark Office has allowed applicants to file provisional patent applications. These applications differ in several important ways from full, nonprovisional utility applications. Unlike nonprovisional applications, they automatically become abandoned 12 months after filing and are never examined or published. Claims and documents are not required for a provisional application. The government filing fee is only $110 ($220 for a large entity with over 500 employees).

So what use is a patent application that is never examined and goes abandoned in 12 months? Well, a full nonprovisional utility application can be filed claiming priority to your provisional application before it goes abandoned. If this is done, any claims in your nonprovisional application that have support in your provisional application are entitled to the earlier filing date of your provisional application. An early filing date is very important because only inventions made before yours can be cited against the patentability of your invention in the Patent Office. If you plan to file foreign applications, these can also be filed claiming priority to your U.S. provisional application before it expires.

A provisional application can therefore be used as an inexpensive means for preserving an early filing date for later U.S. or foreign full applications. Of course a full utility application can also be used to save a filing date for the U.S. and for foreign applications. So why file a provisional application first? There are several reasons.

Extended Patent Term

First of all, the term of a patent lasts 20 years from the filing date of the utility application (although additional time can be added to the term in the case of patent office delay). Filing a provisional patent essentially extends the term of the patent up to a year beyond when it would otherwise end, since the 20 years is calculated from the filing date of the full application and not the provisional application. Of course the patent will not issue as quickly either, since examination does not begin until the full application is filed. However, a patent is often more valuable on the back end of its term than on the front end.

Extra Time for Decision-making

The other main reason to file a provisional application rather than a non-provisional is simply that you need more time before filing the non-provisional application. For example, sometimes a business may need some time to see if they can bring on board the investors they need. They can file for inexpensive provisional application on their technology, which allows them to use the words "patent pending" and shop it around to potential investors or licensees.

If it works out and they have the funding to pursue a full application, they can do so having preserved their early date. If they decide not to proceed, they can simply allow the provisional application to lapse without publishing.

Another common scenerio is that a business will want to get an early date on some new technology it has developed. However, it is unclear whether there may be further development of the technology in the near future. If so, they will want to protect that as well, and perhaps merge the new developments into the existing application. Doing so can be messy and expensive with non-provisional applications. With a provisional application, any new developments can simply be filed as an additional inexpensive provisional application.

When it comes time to file a nonprovisional application, the non-provisional can claim priority to as many provisional applications as necessary. Each claim will receive the date of the earliest provisional application with support for that claim. In that way, it is possible for each development to receive the earliest possible filing date.

The application can be filed online at uspto.gov using a low-cost small patent agent or attorney.

Some patent attorneys file a lot of provisional patents, and others refuse to file any. We think provisional patent filings can be smart and effective in particular instances.

First of all, a provisional patent application is not a substitute for a nonprovisional (regular) patent application. Nor is it a cheap way out. But if you have really good technical papers, like a conference whitepaper or a journal article draft, and your Invention is going to be displayed publicly in less than a month, then a provisional patent application is just the ticket. Once filed, we’ve got a year to back it up with a nonprovisional patent application, otherwise it expires. Provisional patent applications do not publish and stay secret.

If you don’t have really good technical disclosures already on hand, then we’ve got to get together and write one. Once it’s written, then we might as well file it as a nonprovisional patent application.

Nonprovisional patent applications generally publish 18-months after filing. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the Office.

For more information on provisional patents, go to http://www.uspto.gov/web/offices/pac/provapp.htm


For more information on nonprovisional patents, go to http://www.uspto.gov/web/offices/pac/utility/ut...

I concur with Mr. Rylander’s comments. Filing a “cheap” provisional can provide a false sense of security because the actual protection gained may not be much, if anything. Moreover, even if a disclosure is “enabling” as discussed by Mr. Rylander, provisional applications filed by an inventor typically limit the scope of possible protection, which may further reduce the value of such a filing.

I would suggest contacting a few patent attorneys or firms to get some price quotes. Although not ideal, many firms or attorneys will offer a “coached” provisional, where an attorney will assist you in drafting an enabling disclosure for a provisional filing.

Additionally, it’s important to note that our patent law is federal, which means that an application filed with the United States Patent and Trademark office provides protection in every state. As such, there is no patent protection available that is specific to New York.