As a patent attorney working with cash-strapped startup founders, I recommend the use of provisional patent applications. Startups with limited funds can file the provisional application for $70-$140. Then, they will test the invention on the market during the year to determine if it’s valuable and has traction. If it is, the startup can hire a patent attorney will prepare the non-provisional.
Provisional patents are placeholder patent applications that allow you to claim patent status for up to one calendar year. After that, you can decide to invest the greater amount for a full application (nonprovisional patent request) that will be reviewed and become an issued patent. If you don’t file the non-provisional application within one year, you will lose the provisional filing date and if you make offers for sale or publicize your invention during this period, you may lose valuable rights to your invention. This is the downside of the provisional application.
If you are intrigued with provisional applications, read on. We will provide lots of tips on how to succeed with provisional applications.
What is a Provisional Patent Application (PPA)?
A provisional patent is a type of patent application filed with the United States Patent and Trademark Office (USPTO) that establishes an early effective filing date for the invention, but does not mature into an issued patent unless a nonprovisional patent application is filed within one year of the provisional application’s filing date.
A provisional patent application is less formal than a nonprovisional patent application and typically requires less detail and fewer formalities. It is also less expensive to file. However, a provisional patent application does not undergo a substantive examination by the USPTO and will not be granted as a patent unless a nonprovisional patent application is filed and the invention is found to be novel and non-obvious by the USPTO.
Provisional patent application can be useful for inventors who want to establish a priority date for their invention and who are still in the process of developing the invention or testing the market for it. It can also be useful for inventors who are unsure whether they want to pursue a patent but want to reserve the option to do so.
As a conduit to the eventual utility patent, the PPA acts as a placeholder for your subsequent non-provisional application which will eventually become an issued patent if all conditions are met and the PTO allows the non-provisional application to issue as a patent. This allows you to claim priority over any earlier filing date. If you include a detailed description of your invention in your PPA, you may be able to get maximum protection.
The Early Bird Gets the Worm
A Provisional Patent Application allows you to secure your filing date with the United States Patent and Trademark Office (USPTO). This date becomes the recognized date of your invention’s existence. Why is this important?
In the competitive realms of tech and innovation, being first can be the edge your startup needs. If a similar invention pops up, your early filing date can prove pivotal.
Less Formal, More Functional
What makes a PPA particularly attractive for startups is its informality. Unlike the nonprovisional patent applications, a PPA doesn’t require you to dot all the i’s and cross all the t’s on the technical specifications and claims.
Your main goal here is to provide a thorough description of your invention, ensuring that it’s detailed enough to establish what you’ve created and how it works.
Cost-Effective Strategy
For cash-conscious startups, cost management is always top of mind. Filing a PPA can be relatively light on the wallet. This cost-effectiveness allows you to allocate funds to other vital areas like product development or market research, while still protecting your invention in its nascent stage.
Buy Time to Test the Waters
Here’s a tactical advantage — filing a PPA buys you precious time. You get up to one year to explore the market potential of your invention without losing your claim to the patent rights.
This period is perfect for conducting market research, refining your product, or even seeking funding from investors. All the while, your “patent pending” status can add value and credibility to your startup.
Streamline Your Path
When you’re ready to go all in with a nonprovisional patent application, having a PPA can streamline the process. The information filed in your PPA can be transferred directly into your nonprovisional application, making it a smoother, more efficient transition. It’s like having a rough draft; you’ve already laid down the groundwork, which can now serve as a foundation to build upon.
Strategic Public Disclosure
Navigating public disclosures can be tricky. With a PPA, you can discuss your invention publicly without fear of losing patent rights, as long as the nonprovisional application is filed within a year. This ability is a strategic tool in itself, allowing you to test public and commercial interest in your invention while maintaining a safety net.
Ready, Set, Innovate!
As you prepare your PPA, focus on clarity and comprehensiveness. Describe every feature of your invention with as much detail as possible. Think about including sketches or diagrams. While not a requirement, these can enhance understanding and strengthen your filing.
Advantages of Provisional Patent Applications
Provisional patent applications have a number of benefits. They include the following:
- If your invention is still in its early development stage, you may want to consider filing a provisional patent application. A provisional application is a great way to protect your invention and will not impact the validity of a later patent.
- In addition, it is easier to file several provisional patent applications, making it easier to keep track of them and avoid costly mistakes. The USPTO has a detailed list of fees, so it is important to carefully examine all of your options.
- A provisional patent application is also easier to prepare and requires fewer legal resources than a full patent application. A provisional application is not substantively reviewed by a PTO examiner and is only checked to meet minimal filing requirements. There is no prior art search required.
- The process is relatively fast and easy, so you can get started without wasting too much time or money. In addition, a provisional can be filed as soon as 12 months after you initially apply, which gives you plenty of time to evaluate your invention and decide whether it is worth filing. Small entrepreneurs can benefit from this type of application.
- A provisional patent will give you an extra year of protection for your invention. Generally, an issued patent lasts 20 years from its filing date, but when you combine the provisional one year period with the non-provisional patent life of 20 years, the net effect is that you have patent protection for 21 years.
- A provisional does not require any attorney fees, and it will save you time and money. It will lay the foundation for a full patent application, so you can begin developing your product immediately.
- A provisional patent application will allow you to use the term “patent pending” for one year, which will alert the public that you are working on a patent application.
- The use of the term “patent pending” will last for one year, but will not give you a monopoly over your invention until you have a full patent application. You can also file a full patent application after the completion of a provisional patent application.
- A provisional patent application will allow you to protect your invention from being copied by others. In addition, it will prevent your competitors from reverse engineering your invention.
- It is also a cheap and convenient method of protecting your invention. You should not wait too long before filing a non-provisional patent application. It is important to understand that a provisional patent will only last for 12 months. It will help you evaluate your invention’s commercial potential and avoid costly mistakes.
- It is an inexpensive way for you to protect your invention while you are in the early stages of development. It can also be a great way to protect your idea. If you are thinking of pursuing a patent, make sure it’s a good idea to apply for a provisional patent.
A provisional patent application gives you enough time to work through these problems and avoid delays. In addition, it allows you to test your idea and refine it before you make a full-fledged version.
Disadvantages of Provisional Patent Applications
While provisional applications are relatively cheap, but they must be followed up with a full non-provisional application within 12 months. The PPA doesn’t confer any utility rights or other patent rights. It only protects your rights for a year. Within one year, the PPA must be converted into a utility application.
Additionally, while the provisional fees are low, you still need to convert to a non-provisional within a year and this process may increase slightly the total cost of the overall patent application process, especially if multiple provisional applications are filed. A provisional patent is often rejected, but there are ways to make it more effective.
Another disadvantage of a provisional patent application is that it is not examined by the USPTO and thus if you wait one year before you convert to the non-provisional application, your examination will be delayed by a year. In certain fast-moving technology such as AI and deep learning, this delay may be problematic for AI startups and in such case you may want to skip the provisional application and file direct as a non-provisional application.
A provisional patent application is usually filed in a rush. Inventors often leave out important components or details of their inventions. However, the lack of full description of the operation of the invention can cause problems downstream.
Let’s say your invention is “in use” or “on-sale” in the United States. You file the PPA, but you don’t convert it to a utility patent application within twelve months. You could lose your right to any patent you have in that situation.
The Clock is Ticking
One of the most pressing issues with a PPA is its temporal nature. You have exactly one year from the date of filing to decide if you will proceed with a non-provisional patent application.
This deadline is rigid, offering no extensions, which means you need to be very sure about your product’s market viability within that year. For startups, where product development and market testing can take unpredictable turns, this timeline can be particularly daunting.
Lack of Examination: A Double-Edged Sword
While the absence of a substantive examination in the PPA process reduces initial costs, it also means that there’s no feedback from the USPTO regarding the patentability of your invention.
This lack of scrutiny might lead you to invest in a product with unexamined patent claims that could be easily challenged or might not be patentable at all. For a startup, where resources are precious, investing in a product with uncertain patent prospects can be a risky venture.
The Detail Dilemma
With a PPA, the detail you provide in your application is crucial. A common misconception is that a sparse description will suffice. However, the details you omit could be the very ones that are essential for securing patent protection later.
If the follow-up non-provisional application lacks consistency with the initial PPA, or if important details were left out, it could jeopardize the entire patent grant process. This requires startups to have a near-complete understanding of their invention’s technical aspects from the outset, which isn’t always feasible.
Public Disclosure Perils
Filing a PPA allows you to mark your invention as “patent pending” and start public disclosures. However, if you decide not to proceed with a non-provisional application, any disclosed information enters the public domain, free for anyone to use.
This makes it crucial to strategically plan any public disclosures and fully understand the implications if the full patent process isn’t completed.
The Conversion Crunch
When converting a PPA to a non-provisional application, any discrepancies in how the invention is described or any crucial missing information can lead to rejection or a weak patent. The pressure to get everything ‘just right’ in the PPA to ensure a smooth conversion can be intense, especially when you’re iterating your product design and features.
Strategic Planning is Key
To effectively navigate these disadvantages, strategic planning is essential. Here’s a proactive approach: maintain a detailed, disciplined documentation process from day one. Treat the PPA as if it were the non-provisional from a content completeness perspective.
Engage with a patent attorney early in the process to align your PPA closely with potential non-provisional requirements. Also, continuously review the market performance and patentability criteria during the PPA period to make an informed decision about proceeding with the non-provisional filing.
The recommended format for a PPA
While the provisional application does not have a specified format, we recommend that you borrow the format of a non-provisional to ensure a smooth conversion from the provisional application to the non-provisional within a year as required.
While you don’t need to adhere to any specific format requirements in order for a PPA to be valid, it is recommended that you have the following when filing:
- Title of the invention,
- Background information about the invention,
- Description of the product’s design and purpose and any drawings illustrations.
Title
Your title should be a short description of your invention. It should not exceed 500 characters making it easy to clearly describe your invention.
Abstract
The abstract allows the reader to identify the nature and purpose of the technical disclosures related to the invention. An abstract helps readers quickly identify the nature and technical disclosures of the invention. It should not exceed 150 words, and it should be no more than one paragraph. It gives an overview of your invention.
Drawings
Before you begin writing, it is important to draw all details about your invention. This will help you organize your text in a logical way. According to the USPTO, drawings are necessary to understand the invention and should be included with the application.
Drawings may include flow sheets, diagrams, or schematic views for mechanical and electrical inventions. A PPA may be requested by sending photographs or informal drawings. The USPTO requires specific drawings for utility patent applications.
Description
In a non-provisional patent application, you write the description along with the claims to the specification. The details in the applciation should be sufficient to allow a skilled person to create a product, but not require that person to perform extensive research to implement your invention.
It is important to demonstrate concrete and specific methods to achieve the desired result. The USPTO will appreciate your detailed explanations and clear understanding of the whole invention.
It is important to note the best construction method and best use of your invention if you have multiple methods to build it or make it work. It is important to also mention any additional functions that your invention can perform.
- Prior art
While there are no IDS (information disclosure statements) that must be filed in a PPA to preserve prior art citations in the PTO, it is a good idea for you to include citations of prior art in your PPA as reminders to file the IDS during the conversion to non-provisional.
Note any prior art that is relevant to your invention, and explain how it differs from your invention. This will allow you to anticipate arguments that prior art might make your invention more obvious.
It is also helpful to compare your invention to the prior art. You don’t need to search for prior art. However, it is important to disclose your invention to the PTO using the IDS.
- Inventorship
It can be difficult to establish inventorship in a provisional application for patents. If cited in one or more claims of a patent application, the US law recognizes anyone who contributed to the invention’s creation as an inventor.
Any errors in the inventor listing of the PPA can be corrected by Rule 37 CFR. For example, 1.48(e), indicates that: (e) Provisional application–deleting the name or names of the inventor or inventors. A provisional request can be amended to remove the names or names of any persons or people named incorrectly as inventors or inventors within a Provisional application.
- Multiple Inventions
Multiple invention disclosures may be included in a single patent application. The USPTO might charge additional fees if you exceed a certain number of pages in your patent application.
- Fees
You must pay the filing fees when you submit your PPA. If you fail to pay the filing fees, the USPTO will notify you and give you a deadline for responding. You have six months to respond with late fees.
If you miss the deadline, you cannot receive an earlier PPA filing day. As a result, you could lose your valuable patent rights. If your invention is “in use” or “on-sale” in the United States and you fail within 12 months to convert the PPA to a utility application, you may lose your right to patent the invention.
How to do a PPA by yourself
While non-lawyers advertise provisional filing preparation services on sites such as Fiverr, you are better to prepare the PPA yourself. You may want to use patent filing software to guide you along the process. Such software provides a structure that you can use and diagnostics to catch common mistakes and thus reduces your learning curve. If the budget allows, use an experienced patent attorney to prepare and file your provisional or non-provisional patent application. They can help you avoid issues down the road and draft a patent application that issues as a valuable patent.
You can search the USPTO’s official website for published patents as a guideline. You only need to search for patents that belong to the same category as your invention.
To search for the appropriate patent on USPTO’s website, you will need to use the most relevant keywords. You will find the published patent applications as well as issued patents. This will allow you to learn how to make a provisional Patent.
Each idea comes from difficulty or a problem your design is meant to solve. Although the problem itself is not necessary for a patent application, it can be helpful to add details that explain the solution.
You can distinguish your invention’s unique features by evaluating the available solutions, also known as the prior art. It is recommended that your description contain the essential elements of your design.
Although it may seem difficult to describe your invention, it is possible. These are some tips to help you decide how to file a provisional patent yourself. It is a good idea to plan before you begin writing your provisional patent applications. It is essential to plan your application before you start writing it.
The whole application can be divided into separate parts, and, if necessary, additional subsections may be added. Your application content should be organized according to its significance.
For several reasons, it can be advantageous to provide as much detail as possible when filing a provisional application for a patent.
- Increases your chances of getting a Patent granted. The more information included in the Provisional Application, the greater the likelihood that the patent office will consider the invention novel and non-obvious. This can improve your chances of getting a grant for a patent.
- It increases the scope and value of the claims. A provisional application with more details can help define the unique features of the invention, which can increase the scope of claims in the nonprovisional application.
- It increases the patent’s value: Including more information in the provisional applications makes it more likely that the patent is more valuable. This is because it covers a wider range of possible uses and implementations.
- It increases your chances of selling or licensing the invention. By including more information in the provisional applications, it is likely that the invention will become more attractive to potential buyers or licensees.
- This increases your chances of being able stop others from copying the invention. By providing more details in the provisional applications, it is more likely that you invention will be considered unique.
- Increases your chances of being able prove ownership. By providing more details in the provisional applications, it is more likely that an invention will be considered unique. This can make it harder for others to claim that they invented the invention independently.
- This increases your chances of being able defend the patent before the court. A detailed provisional application can be used in court to show the inventor’s conception of the invention. It can also help you defend the patent before the court.
By providing as much detail as possible when filing a provisional application for patent can increase the likelihood of getting a patent granted, expand the scope of the claims, increase the patent’s value, and increase the possibility of selling or licensing the invention. It can also help to defend the patent in court.
questions To Consider when Preparing the PPA
- Why is this invention necessary How can the invention be used to solve the problem?
- Which component/parts are most important in the invention? These components can you combine, rearrange, or eliminate?
- What components are considered new and why? Are these components equivalents?
- How are these components connected to each other? Interconnection is a new concept. Is your interconnection unique?
- What part or parts of the invention did you take the longest to develop?
- Does the invention offer other ways to accomplish the same function?
- Are there other alternatives are there to the invention?
- Which features are the most sought-after by customers/end users, and what do competitors offer?
- What features are the competitors looking for and what can they offer?
- Is the invention making a product more useful? What can you do to improve the product?
- How can the important elements or components of the invention be simplified or rearranged?
- Which component or element is essential? What can you do with such opposites?
- Is the invention as simple as it could be? Are there possible alternative designs that you should describe in the application
What Problem Does Your Invention Solve?
Every great invention begins with a problem in need of a solution. Clarify the problem your invention addresses. This not only helps in drafting a focused PPA but also resonates with potential investors who are always on the lookout for products that meet specific market needs. Describe how your invention solves this problem more effectively than existing solutions, which can strengthen your patent justification.
How Does Your Invention Function?
Dive into the workings of your invention. A detailed functional description is crucial for a strong PPA. Explain the mechanics or the technology behind your invention. Understanding the functionality will help you describe it comprehensively, which is key to securing your patent later. This clarity will also aid in potential future iterations of the product design.
Who Are the Actual Inventors?
Identify everyone who had a hand in creating the invention. Patent law is strict about inventorship accuracy. Incorrectly naming or excluding inventors can lead to legal complications down the road. Make sure you document each contributor’s role to avoid potential disputes or challenges to your patent application.
What Are the Unique Features of Your Invention?
Pinpoint what makes your invention unique. These are not just selling points for your market but critical elements in defending your patent’s validity in the future. Discuss these unique features in detail in your PPA to establish a strong basis for your non-provisional patent application.
Have You Considered All Possible Variations of Your Invention?
Innovation isn’t static. Consider potential variations or improvements that could be made to your invention. Documenting these in your PPA can broaden the scope of your patent protection, preventing competitors from circumventing your patent with minor modifications to your original design.
What Is the Best Method to Implement Your Invention?
Detail the most efficient method to implement your invention, including any specific materials or processes. This not only enhances the robustness of your PPA but also guides your team during the product development phase, ensuring consistency between what’s patented and what’s produced.
How Will Your Invention Impact the Market?
Consider the commercial impact of your invention. Who are the primary users? How large is the potential market? Answers to these questions can help refine your marketing strategy and are also crucial when converting your PPA to a full patent, as they establish the economic utility of your invention.
Have You Documented the Development Process?
Keep thorough records of the development process, from initial concept sketches to finalized designs. This documentation can be invaluable, not just for the PPA but for any legal protections and proving the timeline of invention in case of disputes.
What Are the Potential Legal Impediments?
Understand the legal landscape. Are there existing patents that your invention might infringe on? A preliminary patent search can save you from expensive legal battles later. It’s wise to know where you stand before you file your PPA.
How Will You Handle Intellectual Property Internally?
Decide how you will manage intellectual property within your startup. Who will own the patent rights? How will these rights be handled in the case of an inventor leaving the company? Having a clear IP policy in place can prevent internal conflicts and ensure smooth operation as your startup grows.
The Optional parts of a PPA
PPAs cannot be evaluated so it is not necessary to include prototypes or claims. You can always leave it out.
Claims
It is required for utility patent applications, but it is not necessary for a PPA request. Although it is not required for a PPA application, it should be used to communicate the essence of your invention with the smallest components possible.
They are crucial because patent protection is dependent on the claims that you make in your application. These are the boundaries for your patent. These are the USPTO’s guidelines.
People who wish to design around your patent’s terms use the language in your application. This allows them to narrowly interpret your claims to show that they do not infringe.
To achieve the same goal, they may use variations that are different from your claims. You should ensure that all variations are included in your patent application text to avoid possible attempts to circumvent it.
Prototype
A prototype is not required for a utility application or provisional application. A prototype is not necessary for a utility application or provisional. It’s good to let the world know that you have a prototype.
This will allow you to obtain a valuable patent pioneering patent. It can be accomplished by providing sufficient information to avoid prototyping delays.
Claims: More Than Just a Formality
While it’s true that claims are not required in a PPA, including them can significantly fortify your position. Think of claims as the boundaries of your invention, clearly delineating what you consider to be your intellectual property.
Including preliminary claims in your PPA can act as an early marker, giving you an edge in defining the scope of your invention from the outset. This proactive step can help in warding off potential infringers early on and serves as a practice run for crafting the claims for your non-provisional application.
Prototype: Showing Off Your Functionality
The absence of a requirement for a prototype in a PPA is often seen as a relief to inventors who may not have the resources to produce a prototype early in the development process. However, if you have a working prototype, referencing this in your PPA can be incredibly beneficial.
It demonstrates the feasibility of your invention and supports the descriptions and drawings provided in your application. A prototype can also be a powerful tool in investor presentations, showing that you have moved beyond theory to actual functionality.
Diagrams and Illustrations: A Picture Says a Thousand Words
While drawings are not mandatory unless they are necessary to understand the invention, including detailed diagrams or illustrations can substantially clarify the complexity of your idea.
They can serve to make your technical descriptions clearer and more digestible, both for patent examiners and potential investors or partners who may review your PPA. Well-crafted illustrations can often communicate more effectively than pages of text, providing a quick understanding of the mechanics and innovations of your design.
Detailed Description: The Devil in the Details
The level of detail in a PPA can vary widely, but a more detailed application can provide a stronger foundation for your non-provisional patent application.
By thoroughly describing every aspect of your invention, including how it is made and used, you not only protect your innovation more comprehensively but also build a more substantial case for its novelty and non-obviousness. This can be crucial in industries where the technology is complex or highly competitive.
Test Results: Empirical Evidence to Support Claims
If your invention has undergone any form of testing, including these results in your PPA can greatly enhance its credibility. Test results can prove the functionality and potential market viability of your invention.
They provide concrete data that back up your claims and may even help to sway patent examiners and potential investors about the effectiveness and uniqueness of your invention.
Market Analysis: Understanding the Business Context
Including a market analysis might not be standard for a PPA, but it can be instrumental if your end goal is not just to secure a patent but to attract investment and enter the market successfully.
A well-researched market analysis shows that you understand the commercial potential of your invention, who your competitors are, and what your target market is looking for. This not only bolsters your patent application but also aligns it closely with your business strategy.
Strategic Planning: Preparing for the Next Steps
Finally, it’s wise to outline your future plans in your PPA. Discuss potential R&D directions, future iterations or enhancements, and how you plan to transition from a provisional to a non-provisional patent application. This not only keeps your team aligned but also reassures stakeholders of your long-term vision and commitment to development.
Can you search for another applicant’s PPA?
You cannot search online for a provisional invention because they are not published by the USPTO. Provisional patent applications do not get examined by the USPTO Patent Examiner. They remain in patent pending status at U.S. Patent Office for 12 months.
Provisional patent applications that have been filed after the 12-month deadline are marked as abandoned at the PTO and not published. These applications are normally inaccessible to the public, unless the PPA is part of a granted or published patent application. In such cases, the public can view the provisional application via a direct request using USPTO’s public PAIR portal system.