Cost is always a factor in getting a patent - and that raises the question of going for a provisional patent application. Expectation is that this way is less expensive. While this may be true - the adage “you get what you pay for” really states the truth in the matter.

Let’s review the basics of a provisional application:

  • The application lasts one year
  • The USPTO does not examine them
  • The essential use is for establishing a filing date for the invention
  • During that first year (pendency) the applicant must file a second, regular application that will be examined by the USPTO
  • The Applicant has the opportunity to supplement the disclosure with any new information
  • The new application relies on the filing date of the provisional, but for that date to be effective, the first patent disclosure must support all the claims of the new regular application

Two primary ways a provisional patent application may be used:

One, if public disclosure of the invention has occurred or is about to (which can be a bar to patenting the invention), and there is little time to prepare a regular patent application, you could file just what you have along with a few claims. This can establish your priority date, with relatively little cost.

The problem here is that the provisional may not support the later claims because it did not adequately describe the invention completely.

Two, if development on the invention is continuing, but there is a need for an earlier priority date, i.e., a contemplated public or private disclosure, a provisional patent application can get you a priority date, giving you another year to work on and refine the invention. The question becomes when are you ready to file a full-blown patent application?

You really only have one chance to get it right. If any vital information is left out of the initial disclosure, you may lose the priority date - and even the right to patent your invention.

Except in extreme circumstances, the patent attorney I worked with over the years preferred not to file a provisional. If he did, it would be in the form of a regular patent application with as much disclosure as possible and claims.

Provisionals are good for some situations, but you are better off to file directly for a regular non-provisional patent and get it over with.

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