Provisional Patent Application

A provisional patent application is a tool provided by the patent office to expeditiously establish priority over another applicant who files later on the same invention. If an inventor believes he or she has a patentable idea and wants to establish the earlier filing date, a provisional application is an effective tool. This type of application only requires a description of the invention and applicable drawings. The" claims" section required for non-provisional applications are not required for provisional applications.

Provisional applications expire after one year, after which the application is automatically abandoned. Anytime during this year, a non-provisional application can be filed that can claim priority from the provisional application. In other words, a provisional application holds the inventor's place in the queue until the inventor can file a full fledged patent application. The patent office will not examine the provisional application. However, a provisional application still needs to be carefully written since it is proof the inventor might need if questions or disputes later arise.

A provisional application makes sense if the inventor is uncertain whether the invention will work as intended or whether the invention is marketable. It may then behoove the inventor to resolve these issues before spending a lot of money on a non-provisional application. A provisional application will give the inventor one year to resolve these issues while receiving priority for the application.

The cost of a provisional application is significantly lower than that of a non-provisional application (see fees ) and allows the inventor to make the claim “Patent Pending.” A provisional application is automatically abandoned after one year, so the inventor needs to make sure he or she files the non-provisional patent application based on the provisional before the expiration of the one year deadline.

Why the application timing could be important?

Ideally, a patent application should be filed as soon as a patentable invention can be written in an enabling fashion. The low cost and simplicity of a provisional patent application are good incentives to file early.

Under certain conditions, the inventor may lose the rights to a patent if he/she wait too long to file (Patenting 101 ).

Often times, however, inventions evolve to the point where the final product is quite different from what was originally conceived. Also, some of the various invention versions or “embodiments” may be subject to prior art rejections, while others are not. The provision made by the US Patent Office to handle evolving inventions is referred to as a continuation application. There are several types of continuing applications. One type, the "continuation in part," allows in essence the addition of new embodiments to the application while maintaining the original filing date. The older versions of the inventions that no longer have relevance are subsequently abandoned.

For small enterprises, the filing of multiple continuation applications can get pricey. An invention consultant closely working with the invention can help reduce this cost by:

1. Helping to identify potential prior art that might cause the application to be rejected and
2. Helping to identify additional patentable areas that can be incorporated into the original application.