If you are looking to file for a provisional patent, here are some key advantages and disadvantages to keep in mind.

Advantages:

  • Easy online filing process
  • Reduced costs and paperwork requirements
  • Establishes an official U.S. patent application filing date
  • Allows “Patent Pending" to be used
  • Enables immediate commercial promotion of the product with greater security against having the invention stolen
  • Avoids publication requirements
  • Permits the application to obtain USPTO certified copies
  • Speed, Provisional Patents are much less intensive in the application process than traditional utility patents and can be filed quickly.

Disadvantages:

  • The application is automatically abandoned at the end of the pendency period
  • The inventor must file a non-provisional application during the pendency period to preserve any benefit from the provisional filing
  • Applicants must know that a provisional application will not mature into a granted patent without further action by the applicant
  • No formal examination and no patent issuance (a provisional patent is merely a “placeholder")
  • Extra cost (the cost of a provisional patent application + the cost of a non-provisional patent application)
  • Provisional patents are not published or available online, so if the inventor is looking for support or investors, he may want to file a non-provisional so it is readily available to others.

Cautions:

  • provisional patents are not examined on their merits
  • the benefits of a provisional application cannot be claimed if the one year deadline for filing a non-provisional application has expired
  • provisional patents cannot claim the benefit of a previously-filed application, either foreign or domestic
  • the disclosure of the invention in the provisional application should be as complete as possible (to get the benefit of the earlier filing date, the claimed subject matter in the later filed non-provisional application must have support in the provisional application)
  • name all inventors in the application, if more than one
  • named inventors must have made a contribution to the invention, as described
  • if multiple inventors, each named must have made a contribution, either individually or jointly
  • the non-provisional application must have one inventor in common with the provisional application to claim the benefit of the earlier filing date
  • provisional applications may not be filed for design inventions
  • amendments are not permitted after filing, other than those necessary to comply with applicable regulations
  • no information disclosure statement may be filed in a provisional application.

Remember:

  • a provisional application CANNOT mature into a U.S. patent unless one of the following two events occurs during the pendency period
  1. A corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier provisional application

OR

  1. A grantable petition under patent rule 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed

An applicant whose product is “in use" or “on sale" in the U.S. during the pendency period and who does not file the non-provisional application could lose the right to ever patent the invention.

Remember a provisional patent is not a patent, but is essentially a placeholder for a future patent application, but it begins the process of protecting your idea so that you may later patent it, and defend against infringment.

If you need help filing a provisional patent application. Our firm can have your application completed and beginning the filing process the same day. Give us a call to discuss your project, and set up an appointment or virtual meeting.

Zebulon K. Chandler

Attorney at Law

Chandler and Chandler Law Group

309 N Highland Ave Suite A

Atlanta, Ga 30307

chandlerandchandlerlaw.com

Chandler and Chandler Law Group

Phone: 404 920 4051

Cell: 404 771 8668

Fax: 770 818 5450