Provisional Patent Applications Explained

I was pleasantly surprised and encouraged that some of my classmates had recently filed provisional applications for their startup product. This week's post explains provisional patent applications based on this article from Patent Attorney Gene Quinn and Founder of IPWatchdog.

The first misunderstanding Quinn clarifies is that there is no such thing as a "provisional patent." You file a provisional patent application which establishes priority for your new invention. It is crucial is act quickly in the US, very much a first-to-file world.

With no formal requirements from the USPTO, the provisional patent filing fee can be as low as $65, from a standard government fee of $130 for small entities, i.e. individuals, universities, and companies with less than 500 employees. You also enjoy a "patent pending" status without PTO fees or attorney's fees until you move toward filing a nonprovisional patent, which must occur within 12 months in order to claim the benefits aforementioned. Its low cost makes the provisional patent application a very practical tool for those with a limited budget to secure rights and priority early on. Afterward, the team can work on perfecting the invention and seeing if there is a market.

The 80-20 Pareto Principle applies to the filing process, whereby the final 20% of the process takes 80% of the time. Think about it this way: what you initially conceive is unlikely to be what you ultimately test using 3D renderings, engineering drawings, or prototype as you research, develop, and reiterate in the design process. As soon as your invention is tangible enough to describe, this is a good time to file your provisional patent application before further improvements.

Ultimately, you will need to file a nonprovisional patent application to obtain a patent for your invention. Think of the provisional patent application as one step in the process. Once you file a nonprovisional patent application you cannot add more subject matter to the application. However, you can wrap together any number of provisional applications filed within the last 12 months in your nonprovisional application.

Overall, the provisional patent application is ideal for protecting intellectual rights and conserve funds as you prepare for obtain a patent for your invention. But remember, your provisional patent application is only as good as the detail included. Quinn's analogy is on point:

"If you were the first to invent the automobile you would want to have your patent cover the Yugo version, the Cadillac version and the Ferrari version and everything in between." 

So that leaves us with 2 critical points to wrap up:

1. Make sure you prepare your provisional patent application supremely carefully because patent protection is worthless in the US if the nonprovisional application is incomplete at the time of filing within 12 months from the provisional application filing. Quinn describes completeness as entailing enough detail to allow someone familiar with the technology to make and use the invention by simply reading the patent application filed.

2. Patent drawings- don't skim on expenses here. While professional drawings cost $50-$100 per page (a Chez Panisse meal, at that), drawings are you BFF (Best Friend Forever) when it comes to providing adequate disclosure on the full scope of your invention. In fact Quinn recommends this as a must.

Good luck, inventors! Especially those in college!