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A Provisional patent application sometimes makes sense

by | Feb 3, 2018 | Blog

If you have a new idea or invention, it can be important to get an application filed as soon as possible, since others may independently come up with the same idea, and file for patent protection first.

However, many first-time inventors have limited funds for patent filing. Does it make sense to submit what some view as a “poor man’s patent application”, that is, a Provisional application? And can an inventor do this on their own?

Provisional vs Utility patent applications

A regular ‘Utility’ patent application includes 1) a full technical Description of the invention, 2) drawings that must meet the Patent Office’s particular drawing requirements, and 3) most importantly, a set of claims, which are the legal description of the invention.

The technical Description itself must meet a number of legal guidelines.

Provisional patent applications need careful preparation

A provisional application needs items 1) and 2), but not 3) – that is, no claims are required.  And the drawings can be ‘informal’.  However, the technical Description still must meet all the same requirements as that of a Utility application, and thus must be carefully written.

Some inventors attempt to prepare and file a Provisional on their own, but there are risks involved, and unanticipate pitfalls can cause problems down the road.

While a provisional application is not examined, it must be followed up, within 12 months, by the filing of a Utility application (including claims).  Thus the overall cost (Provisional + Utility) can be more than simply filing a Utility application from the start.

If you have a solid idea of your invention, but also plan to do significant further development over the course of a year, it can sometimes make sense to file a 1st Provisional, and then if improvements are made within the next year, a 2nd or even 3rd Provisional can be filed – and then at the end of the year a full Utility application filed that includes the content of all the Provisionals.

How to decide – Provisional or Utility first?

The information above, along with a number of other considerations, should preferably be reviewed with your patent attorney to determine the best approach to protecting your invention.