Provisional Application for Patent in the United States

 

Provisional Application for Patent is a procedure in the United States that offers you the option to secure a first patent filing date with reduced cost. The cost is reduced primarily by reducing the requirements to securing a filing date compared to regular patent applications. For example, a provisional application is not required to have a formal patent claim or an oath or declaration. Also, information disclosure (prior art) statement should not be included because provisional applications for patent are not examined.

Clients are often unclear whether a Canadian patent application or a US provisional application is more suitable for their purposes. Canadian Intellectual Property Office has a detailed comparison between the provisional application for patent in the United States and the patent application in Canada, which may be helpful to you. If you have any question, please contact us for a free and confidential consultation.

 

The provisional application for patent is provided under US Patent Law 35 U.S.C. §111(b) (the complete United States Patent Law and Regulations can be downloaded here).

 

However, you cannot obtain patent rights from a provisional application for patent. Instead, you must file a nonprovisional application for patent within the non-extendable twelve-month period from the filing date of the provisional application for patent to benefit from the earlier filing date. You may then obtain patent rights based on the nonprovisional application, which benefits from the earlier filing date.

A typical process for filing a US provisional application for patent is shown in the figure below.

Should You File A Provisional Application for Patent in The United States?

A provisional application for patent is a good choice if your invention is not fully developed. The cost may also be reduced because you may not need a fully drafted patent application. Furthermore, you may consider skipping the patentability opinion services and doing your own research.

There are certain benefits in filing a provisional application for patent:

  • Reduced cost for securing the first filing date.

  • The filing of a provisional application for patent allows you to use "Patent Pending" in association with your invention. This indicates to your customers that your product or process is innovative. It may also discourage others from copying your invention.

  • If your invention is not fully developed, you can use the twelve-month period to further develop your invention and add the new development in the nonprovisional application.

  • The twelve-month period allows you to secure investment for your invention.

  • The twelve-month period allows you to test your invention in the market so that you can determine if you should continue to try to obtain patent rights for your invention.

  • In a sense, your patent protection is extended by up to one year if your subsequent nonprovisional patent application is issued to a patent because the patent term is counted from the filing date of the nonprovisional application, as show in the figure below.​

However, there are drawbacks to filing a provisional application for patent:

  • You have to file a nonprovisional application for patent if you want to obtain patent rights, which involves additional costs.

  • If your initial provisional application for patent is too thin in detail, your later nonprovisional application for patent may not receive the benefit of the earlier filing date of the provisional application for patent.

  • Improvements made after the filing of the US provisional application will not enjoy the benefit of the filing date of the provisional application for patent.

Considering these factors, if your invention is fully developed, you may consider preparing a patent application that is suitable for a nonprovisional patent application and initially filing it as a provisional application for patent in the United States.

Are you ready to start? Please contact us for a free and confidential consultation.

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