What is a provisional patent application (PPA)?

• A provisional application, short-term protection for an invention/concept, requires less effort and cost than a formal application (non-provisional patent applications). Both are submitted to USPTO.
• No matter if the inventor files a full-blown patent application, the protection for an application expires after 12 months.
• The provisional application for patent records an intention to follow up with details in a formal application.
• Another inventor can use it as prior art if they claim to have the same idea. It can be used as the first step to obtaining a patent.

Table of Content

1.1 What is provisional patent application (PPA)?

1.2 What are the advantages of a provisional patent?

1.3 What are the disadvantage of a provisional patent?

1.4 What is the recommended format for a provisional patent application (PPA)?

1.4.1 Title

1.4.2 Abstract

1.4.3 Drawings

1.4.4 Description

1.4.5 Prior art

1.4.6 Inventor

1.4.7 Multiple inventions

1.4.8 Fees

1.5 What should I think about in drafting the PPA application?

1.6 What is optional for a PPA?

1.6.1 Claims

1.6.2 Prototype

1.7 What do you do for improvements after PPA filing?

1.1 What is a provisional patent application (PPA)?

The provisional patent applications (PPAs) are an affordable way to protect your rights while considering whether to file a regular utility application. A PPA is a one-year option that allows you to obtain a regular, permanent patent later if your invention proves valuable for a low-cost investment. The PPA acts as a placeholder, allowing you to claim priority over the earlier filing date of the PPA when you convert it into a utility patent application. Inaccuracies and errors can cause your protection to be lost. You may have maximum protection for your invention if you provide a complete and accurate description of your invention in the PPA.

1.2 What are the advantages of a provisional patent?

Provisional patent applications (PPAs), which allow you to obtain patent-pending status with a small budget, can be beneficial early in your company’s life. The patent-pending status allows you to explore potential commercial opportunities, continuous R&D, and/or find investors. The utility patent life is counted when the utility application file is filed. Therefore, the combination PPA/utility filing gives you an additional year of early filing without counting against the 20 years of the eventual Utility Patent.

  • This provides essential protection for your idea described in the PPA for a year while evaluating its technical and business merits.
  • A PPA is less expensive than a complete utility patent application. A PPA is cheaper than a complete utility patent application that costs thousands to tens of millions of dollars.
  • You can enjoy the benefits of early filing by creating an official USPTO record of the date of your invention.
  • It starts the clock for the Paris Convention priority years. This means you must file international applications within one calendar year.
  • This allows you to use a “Patent Pending” notice to discourage others from copying your idea.
  • It is easy to prepare. Format/style is not required. Formal papers such as the Declaration or Inventor’s Oath and the Information Disclosure Statement are optional. This allows inventors to share all relevant information. Anyone can draft a PPA.

A US utility patent applicant gets an additional year of life. The utility application’s lifetime begins when the PPA becomes a utility patent request. The patent system can protect the invention for up to 21 years after the filing date of the PPA.

1.3 What are the disadvantages of a provisional Patent?

  • Your protection will be destroyed if you are not accurate.
  • If you modify your invention or add new improvements, you must file a new application for a regular or provisional patent.
  • The filing period of a utility patent application is within one year.
  • The PPA does not confer a utility or other patent rights and only preserves your rights for one year. The PPA must be converted to a utility application within one year. Suppose your invention is “in practice” or “on the market” in the United States, and you file the PPA but do not convert it into a utility patent application within 12 months. In that case, you could lose the right to any patent the invention because the sale or use of an invention could be prior art to your next patent application.
  • Examining the patentability of your invention is delayed. A PPA cannot be examined until the complete utility patent application has been converted.
  • The one-year international filing deadline is activated. For instance, if you want to claim the PPA’s filing date for international applications, you will need to file a PCT or file directly in the countries you would like protection in one year.
  • It’s only valid in the United States.
  • It is void if the invention is substantially different from the PPA described.

1.4 What format is recommended for a provisional Patent Application (PPA)?

You must adequately describe your invention for a patent protection agreement (PPA). The specification is the bulk part of your application. It includes:

  • Title;
  • Background;
  • Summary;
  • Summary of Drawings
  • How the invention works
  • How it’s constructed, including the best construction method.
  • Abstract
  • While claims are an option for PPAs, they are not mandatory.

Some of these topics will be discussed in the following.

1.4.1 Title

The title is a brief description of your invention. It should not exceed 500 characters.

1.4.2 Abstract

The abstract allows readers to identify the nature of technical disclosures for the invention quickly. Therefore, it should not exceed 150 words and be limited to one paragraph.

1.4.3 Drawings

It is essential to draw the details before you start writing them. This will allow you to organize the text logically.

Drawings are required to understand the invention according to the USPTO, and they should be submitted with the application. The drawings may include flow sheets, diagrams, or schematic views for electrical and mechanical inventions.  Photographs or informal drawings may be submitted for a PPA. However, for utility patent applications, particular drawings are required by the USPTO.

1.4.4 Description

The PPA will not be checked for sufficiency in disclosure or enablement. However, you must provide thorough and thoughtful disclosures, including implementing-construct and using your invention. You should disclose more than just expressing a desire to do something. This is not called inventing but wishing.

It should be enough to enable someone of average skill to create a product or perform a process that requires extensive research and experimentation. It is essential to show concrete, specific ways to get the desired result. You will show the USPTO by providing details with a clear idea of the entire and operative invention.  

If you have more than one method to build or operate your invention, it is essential to write down the best construction method and the best use of your invention. You could lose your utility patent application if you don’t do this. You should also note any additional functions but describe them briefly.

1.4.5 Prior art

Although there isn’t IDS (information disclosure statement) required to file in a PPA for prior art submissions to the PTO to save prior art citations, it is a good idea to keep citations of known prior art in your PPA when you convert it to a utility application. You should note any prior art relevant to your invention and describe how it differs from the rest. This will help you anticipate arguments that prior art makes your invention obvious. In addition, it is helpful to describe the advantages of your invention in comparison to the prior art. While you don’t have to search for prior art, you should disclose it to the PTO by using the IDS.

1.4.6 Inventor

It can be tricky to determine the inventorship of a provisional application. Again, U.S. law generally regards any individual who contributed to the conception of an invention as recited in one or more claims of a patent application as an inventor. However, there is no requirement for claims in a PPA. If your PPA does not have claims, determining the inventor can be hard.

It might be helpful to know that some lawyers determine inventorship based on the invention as described in the PPA’s specification. Using the specification, they’ve concluded that anyone who contributed to the PPA’s description and drawings may be listed as an inventor.

On the other hand, anyone who contributes only lab or assembly labor, supervision of routine techniques, or other non-mental contributions, should not be considered an inventor. If you made an error in listing inventor(s), rule 37 C.F.R. 1.48(e) indicates that:
(e) Provisional application—deleting the name or names of the inventor or inventors. If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change
(2) A statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons
(3) The processing fee, and
(4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee.

1.4.7 Multiple inventions

Multiple invention disclosures can be included in one patent application. However, the USPTO may charge additional fees for exceeding a specified number of pages in your application.

1.4.8 Fees

When you submit your PPA, you must pay the filing fees. The USPTO will notify you with a deadline to respond if you do not pay the filing fees. You have six months to reply with late fees.

You cannot benefit from an earlier PPA filing date if you miss the deadline. You lose valuable patent rights as a result. For example, if your invention is “in-use” or “on-sale” in the United States, and you fail to convert the PPA into a utility application within twelve months, you could lose the right ever to patent it. Because you would not be able to claim priority to the PPA, the invention’s use/sale/publication would become prior art. It could not be used against your subsequent utility patent application.

1.5 What should you consider when drafting the PPA Application?

Before you begin the filing process, it is essential to determine whether your idea can be patentable. Consider factors like cost, time, type, and the subject matter of your invention. You should consider:

* Why is this invention necessary? What problem does the invention solve, and how can it be addressed?

* What is the significant component/parts of the invention? Can you combine, rearrange or eliminate these components?

* Which components are new, and why do they matter? Do these components have an equivalent?

* How are these components connected? Is interconnection a new concept? Is your interconnection unique?

* Which part (or parts) of the invention took you the longest to create?

* Does the invention provide other methods to perform the same function?

* What problems are the invention solving, and what was its most challenging part?

* What are some alternatives to the invention?

* What are the benefits of the invention over alternatives? How can they be achieved?

* What features are most desired by customers/end-users, and what can the competitors offer?

* What features do the competitors want, and how can they provide them?

* What features are most likely copied? How can the competition copy them (so you can describe potential designs around)?

* Does the invention make a product better? How can you improve the product, and in what manner?

* What other options might be available to solve the problem?

* What elements or components can you add? What elements can you take out?

* How can the significant elements or components of the invention be simplified or rearranged?

* What parts are possible to substitute for or combine?

* Which element or component is vital? How can you use such opposites in an invention?

* Is the invention as easy as it can be? What can be eliminated?

* How can you make it affordable and accessible? How?

Because patents increase their business value, companies file for them often. For example, patents that cover a blockbuster drug can have a value of billions. Patent rights allow manufacturers to recover substantial investment in research, development, and regulatory approval.

The PPA does not require you to file the utility application paperwork. However, we recommend that you include all details in the PPA material. You must provide sufficient information to enable others to make or use your invention. This is where the GIGO rule applies: garbage in, trash out. Best value is guaranteed when there is an early filing date and if you submit high-quality material to the PPA.

1.6 What parts are optional for a PPA?

PPAs cannot be evaluated, so there are no requirements to include claims or prototypes. It is always possible to leave it out.

1.6.1 Claims

While it is not required for a PPA application, it is necessary for utility patent applications. Although it is not required in the PPA, you should still attempt to convey the essence of your invention in the broadest expression possible and the minimum components necessary to implement it. These are important because patent protection depends on the claims you assert in your application. These are the boundaries of your patent. These are the guidelines set by the USPTO. People who want to design around your patent use the language in your application to interpret your claims narrowly to prove that they don’t infringe. They may also use variations that take a different approach to avoid your claims to achieve the same goal. To avoid potential attempts to circumvent your idea, ensure that your patent application text includes all possible variations. These variations should not be considered mandatory or necessary.

1.6.2 Prototype

For a utility or provisional application, a prototype is not necessary. A prototype is not required for a utility or provisional application. However, it’s a good idea to let the world know if you have a prototype. Then, the PPA can be used to establish a valuable pioneering patent. This is done by providing enough information so that prototyping delays are avoided.

1.7 What do you do for additions after PPA filing?

To avoid filing another PPA, you may include additional information in the utility application. However, you may file another PPA if you are still not close to the utility filing deadline. This is if the new information or improvements are patently significant. For example, it is best to wait until you file your utility patent application to incorporate them in incremental improvements.