Should you file a provisional patent application?
The provisional patent application (PPA) is a way to quickly
establish a priority date. The PPA never matures into a utility patent and
automatically becomes abandoned after one year. Before abandonment, it must be
replaced with a utility patent application or priority is lost which could
under some circumstances lead to a total loss of patent rights. It is not
possible to get an extension past the year.
The PPA is is an un-examined application that must contain enough information to enable a person of skill to make and operate the invention, and does not have to provide any claims (the description that actually protects the invention). The PPA should contain drawings if they are needed to understand the invention in the same way a utility application needs drawings. The only time the PPA is examined, is after the fact when a utility application claims priority from the provisional application. In this case, the PPA is examined to be sure that the invention was sufficiently disclosed (enabled). In this way, a PPA allows an inventor extra time to get a formal application together and postpones some of the cost associated with a utility application.
The PPA is is an un-examined application that must contain enough information to enable a person of skill to make and operate the invention, and does not have to provide any claims (the description that actually protects the invention). The PPA should contain drawings if they are needed to understand the invention in the same way a utility application needs drawings. The only time the PPA is examined, is after the fact when a utility application claims priority from the provisional application. In this case, the PPA is examined to be sure that the invention was sufficiently disclosed (enabled). In this way, a PPA allows an inventor extra time to get a formal application together and postpones some of the cost associated with a utility application.
Unfortunately, there are down sides to the PPA.
There are two areas of concern regarding the PPA.
First is the very real danger that the PPA will not include enough disclosure that describes how to make and operate the invention. Because the PPA is unexamined, as long as the application meets the formal requirements of having a cover page identifying the application, etc. it will be given a filing date and the inventor is entitled to use the patent pending notification with respect to the invention. Therein lies the problem; an inventor can feel protected as to their invention, yet when the PPA is eventually replaced with a utility application, the patent office can find that the invention was not sufficiently disclosed and a new application without the benefit of the PPA priority date must be filed. This can be disastrous depending on the circumstances. When filing the non-provisional, it is possible to file a few new pages and a drawing or two to their PPA and then lost all rights to the invention. The "self-help" articles explain that inventors can get "patent pending" status in one day at a fraction of the cost of a patent agent! While this statement is true (at some level), it is highly unlikely that a significant and sufficient PPA can be prepared in a few hours and when the inventor goes to file the utility application, it may be impossible to claim priority to the PPA (thereby leading to a potential loss of rights if someone else filed for the same invention in the meantime).
The second disadvantage to the PPA is that while it postpones some of the costs associated with a utility application, in the long run it costs more than if the inventor just filed the utility application. Since a utility application must be filed within a year of the PPA, the money spent on the PPA is an "extra" cost with respect to the utility application filed later.
First is the very real danger that the PPA will not include enough disclosure that describes how to make and operate the invention. Because the PPA is unexamined, as long as the application meets the formal requirements of having a cover page identifying the application, etc. it will be given a filing date and the inventor is entitled to use the patent pending notification with respect to the invention. Therein lies the problem; an inventor can feel protected as to their invention, yet when the PPA is eventually replaced with a utility application, the patent office can find that the invention was not sufficiently disclosed and a new application without the benefit of the PPA priority date must be filed. This can be disastrous depending on the circumstances. When filing the non-provisional, it is possible to file a few new pages and a drawing or two to their PPA and then lost all rights to the invention. The "self-help" articles explain that inventors can get "patent pending" status in one day at a fraction of the cost of a patent agent! While this statement is true (at some level), it is highly unlikely that a significant and sufficient PPA can be prepared in a few hours and when the inventor goes to file the utility application, it may be impossible to claim priority to the PPA (thereby leading to a potential loss of rights if someone else filed for the same invention in the meantime).
The second disadvantage to the PPA is that while it postpones some of the costs associated with a utility application, in the long run it costs more than if the inventor just filed the utility application. Since a utility application must be filed within a year of the PPA, the money spent on the PPA is an "extra" cost with respect to the utility application filed later.
So what is the bottom line regarding PPA’s?
They are a valuable tool for working under on a tight budget
or in a hurry to establish a priority date, but they should be prepared and filed
with care. If you decide to file a PPA on your own, you should carefully
research all you can about filing utility applications and remember that
eventually your PPA needs to serve as the basis for your utility application.
The PPA must be written with the same level of care as a utility patent
application. Some patent agents offer a fairly low cost review service for
inventors filing on their own.
