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.
A provisional application can also be used if you are unsure whether to file a patent application at all. Perhaps you are considering keeping the tehcnology a trade secret or abandoning it. A provisional application saves an early date in case you decide some time in the next year that you would like to proceed. If you do not, simply allow your provisional application to go abandoned and it will never be published.
So, any time you are not sure if you want to spend the time and money on a full nonprovisional patent application or whether there will be additional developments you will want to include in your nonprovisional application, filing a provisional application is a good choice.
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