A provisional patent application, also known as a “PPA” or simply a “provisional,” can be an inventor’s best friend and secret weapon. However, it should be noted hat a provisional is NOT a patent. It is a placeholder application that does not give the inventor any immediate enforcement rights. I bring this up because I often hear people say they “got a provisional patent,” and it scares me that they are not aware that further action will be needed if they want long-term protection. Regardless, a provisional patent application affords an inventor many advantages from both a strategic and financial standpoint. No matter what the long-term goal is for an invention, the following six characteristics of a provisional application should be considered.
1. First-to-File and Priority
The patent system in the United States (as well as in the most of the world) gives rights to the first true inventor to file an application for an invention. This means any unnecessary delays in submitting a patent application could mean the loss an opportunity to capitalize on a great idea. I like to think of the patent application process as being similar to ordering at a high-intensity Italian deli. You take a number and the person whose number is called first gets their pick of the selection. The longer you wait to pick a number, the greater the risk that your favorite cold cut will be sold out. A provisional patent application is a placeholder that lets you “take a number” before you are ready to order, giving you priority over the next guy. Imagine dropping off a friend at the deli to take a number while you find a parking spot. You don’t have to go to the back of the line when you walk in to order. Your buddy, the provisional application, is saving you a spot.
2. Less Formality = Lower Price
Because provisional patent applications are merely placeholders, they are not required to follow all of the formalities of a nonprovisional patent application. When your provisional application won’t even be examined by a patent examiner when it gets to the patent office. It just becomes part of the record to determine priority. While a provisional application must describe an invention with enough detail to show that an inventor is really in possession of an idea, less attention needs to be required to the format of a provisional application. This means less time can be spent on preparing the application, which, in turn, means less money you need to pay to a registered patent agent or attorney. Also, the USPTO fees for a provisional patent application are less than a nonprovisional patent. If an idea does not pan out, you have less invested in your application and, thus, less to lose.
3. Determine Market Potential
Why does a provisional patent application even exist? What is the rationale behind having a placeholder patent like this? A provisional patent application gives an inventor a one-year window after filing to decide whether or not to pursue a nonprovisional patent. The idea is that a provisional application will encourage innovation by giving inventors time to explore the potential of an idea. The one-year provisional window is an opportunity to conduct research and product testing, and to try put agreements in place to ensure that paying much more to file nonprovisional patent will be worthwhile. An inventor can assess the market potential of an idea without worrying that another inventor will patent the idea first. To use my deli analogy, the inventor puts one foot in line while he reads the menu. If he decides he doesn’t want to order then he can walk away without much of a loss.
4. Account for Development
Inventions can change drastically from the time of their inception to when they are market-ready. It is common for an idea to go through many iterations, but if your idea changes too drastically after you file your nonprovisional application, then essential features of your final product may no longer be covered by your original application. You will have to file additional applications to protect these additional features. Luckily, several provisional applications can be combined into one nonprovisional application. Utilizing provisional applications allows an inventor to affordably explore improvements on an idea without worrying that they will make a previous nonprovisional patent application less valuable.
5. “Patent Pending” and Perceived Ownership
File your provisional application and slap “patent pending” on your product. Puff out your chest and let your competitors know that there will be consequences if they steal your idea. Filing a provisional patent application gives an inventor “perceived ownership” of an idea. We use the word “perceived” because a provisional application does not grant an inventor any rights on its own, and because a provisional application isn’t examined at the patent office, it is hard to say whether or not a patent will be granted in the future. Nevertheless, “patent pending” can be used to deter potential competitors. Also, saying that you have a “patent pending” can give you great leverage when negotiating potential licensing agreements. An inventor can lock down licensing deals and secure royalties before even submitting an application for a nonprovisional patent. This is an incredibly empowering and exciting strategy.
6. One Extra Year of Protection
After filing a provisional application, an inventor has one year to either convert the provisional to a nonprovisional application, or to file a new nonprovisional application. If an inventor decides to convert the provisional to a nonprovisional, then the term of the resulting patent will be 20 years from the date the provisional patent application was filed. BUT, there is a better way. If an inventor files a new nonprovisional application for the same invention that was in an earlier provisional application, the inventor can still use the date of the provisional application to determine who was the first-to-file. The cool thing is that when an inventor takes this approach, the term of the resulting patent is 20 years from the date of the nonprovisional patent application. This means that the inventor can enjoy the benefit of one additional year of protection by using a provisional application (one year under the provisional application followed by 20 years under the granted nonprovisional patent). Inventors should be careful, however. Waiting too long to file a nonprovisional application after filing a provisional could be of dire consequence. A provisional application expires one year after filing. If a provisional application is allowed to expire, an inventor will miss a chance to ever receive a nonprovisional patent.
About the Author:
David "Tyler" Bennett is a business and intellectual property attorney, and he is a partner at Verhagen | Bennett LLP. To learn more about David, please click here.
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© 2017 David T. Bennett — This article is for general information only. The information presented should not be construed to be formal legal advice nor the formation of a lawyer/client relationship.