US Provisional Patents

Startup and video game law, from a Canadian and U.S. perspective

Weekly, we receive phone calls from prospective clients inquiring about provisional patent applications. While provisional patent applications have a number of benefits, especially for cost-conscious startups and entrepreneurs, we too often encounter misconceptions concerning the protections that a provisional patent application provides. In this blog post we will cover what a provision patent application is, its positives and negatives.

What is a provisional patent?

A provisional patent application is essentially a placeholder patent application filed with the US Patent and Trademark Office. Once filed, you have up to 1 year to convert the provisional patent application into a full utility patent application and, if not converted, the provisional automatically expires. Once the utility patent application is filed, the subject matter of the utility patent application (ie. invention) will be granted a claim date effective as of the date the provisional patent application was filed.

There are a few formal provisional drafting requirements, including a title, the name(s) of the inventor(s), address of the inventor(s), correspondence address, and a written description. At times, a drawing on the back of a napkin can be sufficient. The provisional application is not publicly available, and the USPTO does not conduct any review of it.

It is critical to understand that no patent rights are granted by the provisional patent application, except for the ability to file for a full utility patent application within the 1-year time frame for the invention described in the provisional patent application.

Positives

There are a number of benefits to a provisional patent application, namely:

1. Preserves your intellectual property rights as of the provisional’s filing date, which is critical in advance of any public disclosures you are contemplating;
2. Relatively inexpensive, with the cost of a provisional application being substantially less than a full utility patent application;
3. Is not made publicly available;
4. You are “Patent Pending”; and
5. May appeal to investors by beginning an intellectual property portfolio.

Negatives

The downsides to a provisional patent application are:

1. Does not issue as a patent;
2. Is not a utility patent and, unless converted into one, lapses after one year;
3. Since it is not reviewed by the USPTO, no stance is taken on whether the invention is patentable; and
4. Only exists under US law with no similar structure existing in Canada or Europe.

We believe that provisional patent applications are an immensely valuable resource for our clients, especially where deployed as a cost-effective means to secure a filing date for a subsequent utility patent in advance of contemplated public disclosures of the invention. However, when considering a provisional patent application, it’s critical to keep in mind that it’s a stepping stone to a full utility patent, and not a stand-alone patent application itself.

Feel free to reach out to the Voyer Law team to discuss provisional patent applications and a filing strategy for your invention.