There are many good reasons to consider filing a provisional patent application on your new idea. Of course, a patent attorney will be able to explain the benefits and issues of a provisional application and to help in putting it together. Although I’m not an attorney, I have filed quite a few applications on my own inventive ideas, and have worked with many start-up clients while they’ve filed their applications. I have my own thoughts on the usefulness of the provisional patent application.

If you’re unfamiliar with the provisional patent application, a couple of good places for a quick introduction are at Wikipedia and, of course, the US Patent and Trademark Office. In a nutshell, the provisional patent application allows an inventor (or the inventor’s patent attorney or agent) to file a description of the invention with the USPTO in order to secure a filing date. That filing date is likely much earlier than if the inventor had gone through the process of preparing and filing a full (nonprovisional) application. The provisional application serves only as a “stake in the ground” for claiming the earliest priority date – remember, the US system is no longer based on “first-to-invent” but rather “first-to-file”, so having the earliest possible priority date can be very important in any subsequent patent litigation.

To me, using the provisional application process has many clear benefits to the inventor/entrepreneur:

It’s cheap. As I write this, the fee to file a provisional application for a small entity is $130.00, and is only $65.00 if you qualify as a micro entity, which is intended for those who are just starting to use the provisional application process. While I would never consider filing a full patent application without the help of one of my favorite patent attorneys – really, never – filing your own provisional application is a great option if you’re on a budget, or need to get your idea filed before your big meeting with an investor just a couple of days away. You should be OK if you follow the instructions carefully, but if you’re not sure, talk to a patent attorney. Some attorneys may be willing to work with you on an advisory basis to help keep your costs down.

It’s easy. The only time an examiner at the USPTO might look at your invention description is later on if you file a full application claiming a priority date from the provisional application. So, it is a good idea to add as much breadth of concept and depth of detail to the application since no one will ever argue with you about what should or shouldn’t be in the document. And, the application is not published, so if you decide later on it really wasn’t a good idea, no one has to know!

It forces you to think (or it should, if you’re doing it right). Just like for a full patent application, there are differences between a well-written and a poorly-written provisional application. To cover your bases for when you file a full application later on, think about what you would do if you were a competitor and wanted to design around the invention. What other materials could you use in place of the plastic that’s disclosed, such as traditional metals, powder injection-molded metals, composites, etc.? What other ways could you assemble the device, such as with adhesives, sonic welding, snap-locks or with 3D printing? What other power sources could you use, such as pneumatic, hydraulic, etc.?

It lets you say there’s a “patent pending”. Just remember it’s only pending until it expires in 12 months, unless you file a full patent application on your idea before then.

The inventor/entrepreneur needs to know the limitations of the provisional patent application, and they can be significant:

It doesn’t automatically turn into a patent. You will have to spend serious cash to submit a full patent application based on the provisional application before the provisional expires in 12 months. Plan a budget in the neighborhood of $15,000 and a lot of your own time to work with a patent attorney to prepare and file a full application.

It only helps with the inventive ideas described in your full application. If you make a significant improvement to your idea after you file the provisional application, you can’t claim the priority date of the provisional application for the improvement. If you want to get the earliest priority date on your idea that incorporates the improvement, you will have to file another provisional application. This is where it’s beneficial to describe as many reasonable design alternatives as you can in the original application, even if you think they are not the best option at the time. Go wild.

It can’t be “renewed” if you don’t file a full application within 12 months after filing. You have other options if this happens, but it’s best to review them with a patent attorney.

I’ve found that having a provisional application can be a useful marketing tool in discussions with potential investors. The application can help to explain a complicated idea, especially if the investor’s patent counsel reviews it as part of the opportunity assessment or due diligence process. The mere presence of the application can convey a sense of competence and professionalism, and an investor will likely be impressed if you’ve provided plenty of detail and covered all of the bases. And since most investment groups will not sign non-disclosure agreements, having filed a provisional application can not only help with public disclosure issues related to patent filings but also put investors on notice that you are serious about protecting your intellectual property.

Like any tool, you need to know the limitations of the provisional patent application, but it is cheap, easy and can be a big help to the entrepreneur or start-up with their short-term cash flow and with the longer-term investment process.

Britt