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Filing a provisional application with the UPTO comes with a certain set of advantages in certain situations. However, it's not something you necessarily have to do, nor is it always something you should do. Understanding the purpose and benefits of provisional applications is important for anyone planning to file a patent application. On this page, we'll cover what a Provisional Application does for you, and also what it doesn't do.
Sometimes referred to as a “Provisional Patent Application” (or PPA a somewhat misleading term) a Provisional Application for Patent is a patent application that is filed in the US Patent and Trademark Office (USPTO) much like any other patent application.
As with a regular utility patent application, the provisional application will be granted a filing date. The difference is that, unlike conventional utility patent applications, provisional applications will:
No. A provisional application will never be issued as a patent.That is not their purpose. The purpose of filing a provisional application is to achieve an earlier filing date when you file your utility patent. The utility patent has to be filed separately, and it will need to be examined and could potentially be issued as a patent. The provisional application allows you to secure an earlier filing date as you are preparing to submit the full utility patent. See our Patent FAQ for more on the advantages of earlier filing dates.
There are 2 ways to do this without losing the benefit of your Provisional Application filing date:
In the end, it wouldn’t really matter which of these options you choose. However, there could be significant procedural differences.
There are no formal requirements for a Provisional Application. What you need are specifications and drawings in no particular format. While no claims are required, it is probably not a bad idea to include one general claim in order to avoid a problem along the way if another foreign country decides that an application with no claims is not “complete”.
Inventors should not assume that just because there are no formal requirements they can file anything and get the benefits of an early filing date when they later file their conventional application. The Provisional Application need to be “enabling”. You will have to describe your invention in a complete and thorough detail in which a “person having ordinary skill in the art” could build or practice the invention from your application, as defined by the claims in the utility patent that you will file later. Because you may not know exactly what those claims will be, you must include everything that you know about the invention in the Provisional Application. Include clear drawings that show every feature of the invention and describe how your invention is built and practiced in as many alternatives as you think possible.
We recommend that you get a professional patent attorney to help you prepare and file the provisional application. Should you wish to write your own disclosure to be used as a provisional application, we recommend that you still ask for a patent professional to review and file the provisional application to make sure that you have not mentioned anything that might limit your later utility patent and to see that the application is filed correctly. Get an estimate now to connect with a patent professional.
A Provisional Cover Sheet and a Fee Transmittal form are the only forms you will need if you decide to file on paper. You can get these from the USPTO website. Make sure to include your self-addressed return postcard with the list of the items you are filing that the PTO will stamp and return to you and use USPS Express Mail, return receipt requested.
You can also file your provisional application using the USPTO’s EFS-Web system. You will need to file the application in PDF format along with an EFS version of the Application Data Sheet. No Fee Transmittal form will be needed as it will automatically be generated.
Tthe e-filing system has specific requirements concerning how the files are created and what files you need to upload. What you're able to do on the EFS-Web system will also depend on whether or not you are registered with the USPTO. For these and other reasons, we highly recommend that you have a patent professional to do the actual filing as a registered filer even if it is possible to file your provisional application yourself as an unregistered filer.
Under an older program of the USPTO, a Disclosure Document allowed the inventor to file a description of their invention with a small fee of $10. A Provisional Application is a “real” patent application that gets you a filing date and lets you claim “patent pending” status. Note that the Disclosure Document program no longer exists as of November 2006. Provisional applications have replaced them.
You have to make this decision based on your specific circumstances. Provisional Applications are not a cheap alternative to a conventional patent application. It can have advantages, but only if use properly. Otherwise, they are a waste of time and money.
Note: An inventor cannot file a design patent claiming the benefit of a Provisional Application. If a design patent is the appropriate form of protection to the invention, a design patent application must be filed.
If you want to use the filing date of the US application as the priority filing date for foreign applications, you need to file for those patents within a year of filing the US Patent Application. This can be very important as most countries do not permit any sale or publication prior filing for a patent. Many applicants used this year to test the waters and see how the USPTO was going to respond before committing to the enormous cost of filing in other countries.
Note: If you are going to use the earlier Provisional filing date as your “Priority Date” for the foreign application(s), the Provisional Application starts the 1-year period for foreign filing.
You will need to file both the US and foreign or PCT applications within a year of your Provisional Application filing date if you are planning to file in foreign countries. As a practical matter, this means filing both of them at the same time, which could be a huge expense all at once.
Get an estimate now from our patent law experts. Whether you are planning on filing a provisional application, utility patent, or even if you have questions about copyright law or trademarks, our intellectual property attorneys are ready to serve you. Cad Crowd offers premier design and CAD services for inventors and entrepreneurs, from prototyping to manufacturing. Bring your invention to life with Cad Crowd!