Why Filing Provisional Patent Application Must Always Be ‘The First Step’?

by | Feb 13, 2019 | Insights | 0 comments

A provisional patent application is a preliminary patent application that allows the inventor/applicant to file patent application without including all the details, such as patent claims, declaration or oath, or declaration about prior art. Filing provisional patent application has been validated by the USPTO on June 8, 1995. Since that date, filing provisional patent application has provided US filers an extra window of 12 months (non-provisional application/complete application has to be filed within this time period) to think about the claims, and all the minute details, after once filing a partial application in the USPTO. Once you file a provisional patent application, you can claim that you have a ‘patent pending’. It has been an extraordinary step, since the patent system has been changed now from ‘first to invent’ to ‘first to file’.

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provisional patent application

Merits of Filing Provisional Patent Application

In this article, we will go through all the benefits of filing provisional application before filing the complete patent application.

  • It initiates the patent process: Provisional patent application serves as a way to initiate the patent process since it is filed as a preliminary step in a much cheaper price. Since you don’t need to put all the necessary information (claims, declaration, etc.) that makes the application complete, it requires a very less investment for its creation (attorney doesn’t cost much since claims are not included) and its filing (in the USPTO). It’s better to resolve all the unanswered questions at the early stages wisely, then to do a huge investment in filing the non-provisional application, directly.
  • It provides a buffer/grace window of 12 months: Sometimes, it seems a little fuzzy to prepare an incomplete patent application (filing provisional application) in less time, than to file a complete one and putting all the efforts in filing one rather than filing two separate applications. Well, the answer to this question is that there is always a scope of ambiguity, and one should always try to make it minimal. Filing provisional application first, will give you enormous time of 12 months, in which you can finalize all your claims, do better research, check your competitors, etc. It gives you enough time to test the market to analyze whether you are prepared enough to hit the ground running or not.

Also, the time period can be extended inmost rare cases, which is currently an extension of 2 months after the 12 months. But, a huge amount of cost has to be invested to take the extension of 2 months.

  • It allows you to work towards perfecting your invention: The end result of filing every patent application is to successfully get the patent. No one wants rejection from the examiner’s side at any point of patent prosecution process. For this, the applicant/inventor has to make sure all the things are correct within the application. It’s better to file a provisional patent application to analyze all the details, complied within the application by reserving an exclusive area of research in your name. There is always a chance to expand the scope, while simply stating name/area of your invention, to make the competitors alert about your choice of research domain. It allows continuing to work on sanitizing, finalizing and improving the invention.

It’s like booking movie tickets from an app, and not paying the fees at the portal. In this way, the seats will be reserved for you till the show starts; no one can book that, and you always have the option to pay at the movie counter and take those seats, or just ignore the booking, without paying anything. Simply speaking, it’s called ‘safe play’.

  • It brings flow and continuity in research: Filing provisional patent application is best for those who are still in process to continue their research. It allows you to file what you have at the moment, and once your work is done, its non-provisional application can be filed. But, it must be filed as soon as you reach your goals, and before 12 months. Once its past 12 months, your provisional patent application will be abandoned, and now you can either file a provisional patent application again, or directly file a non-provisional patent application.
  • It allows funds conservation during the course of patent pending: Another important benefit of filing provisional patent application is that the patent office will do nothing with this application until its non-provisional application is filed. This clearly points out that since no further action is going to be take place from the USPTO, no further PTO fees and additional attorney’s fees will be incurred. Saving a lot in your pocket, you always have the option to complete your research and put your claims on the ground, or step back if you are unable to complete your work. In most cases, during the patent pending course, most inventors/applicants are able to save their pockets and utilize those funds in completing their work.
  • It offers you the benefit of earlier filing date: Filing provisional patent application, and then filing its non-provisional patent application, offers you the benefit of taking the filing date of the provisional patent application as the final filing date. This only happens in the case when the provisional patent application is filed in appropriate manner. A poorly prepared provisional patent application is of no use when it comes to deeming the filing date of non-provisional patent application to the filing date of the provisional patent application.

It’s important to understand that preliminary does not mean inaccurate or insignificant. It has to prove that all the patentability requirements are met and must include as much details as possible. Utter care must be taken to check that the disclosure filed as the provisional application, significantly provides full scope description of the subject matter for the invention. This all will only be beneficial if stated properly to establish priority in the latter stage.

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Filing provisional patent application offers you the aforementioned advantages and also an extreme confidence while continuing building and testing different prototypes, leading to important discoveries. 

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