Provisional vs. utility patents

In order to be granted a patent, you must file a “utility” patent application. That filing must contain enough detail to show the people in your field what your invention is and how it works. If you don’t have all of those details ready for filing or you are on a budget, you can file a “provisional patent” application instead, which doesn’t need to have all of the details required in a utility application. Filing a provisional patent application allows you to establish a filing date for less money, and often more quickly, than a utility application. However, a provisional application will not be examined by the Patent Office, and, thus, cannot mature into a granted patent. If you filed a provisional patent application and want to obtain a granted patent application, you must file a related “utility” patent application within one year of the filing date of the provisional application. Further, if you wish to obtain patent protection in foreign countries, you must also file those applications within one year of your provisional filing date.

Provisional applications help you make the most of a limited budget early in the life of your company. The money saved can be invested in exploring the invention’s commercial potential, continuing R&D, and/or finding investors. Meanwhile, you can use the phrase “Patent Pending” in connection with the invention to put the world on notice and deter copycats. Also, if your invention is one that is likely to be more profitable near the end of the patent’s life as opposed to early in its life (as is sometimes the case for medical devices and pharmaceuticals), a provisional application gives you the advantage of the early filing date without counting against the 20-year life of the patent.

Although a provisional application avoids many of the filing formalities required of a utility application, don’t cut corners on the material you put into the provisional application. The provisional application must enable others to make and use the invention, and you must disclose enough detail to show others what you invented. You will only get an early filing date for claims that are supported by the disclosure in the provisional application, so it is important to be as complete as possible and to consider what will ultimately be claimed in the utility application when drafting the provisional application. Your patent attorney should work closely with you to help put high quality material into a provisional application so you get the most value out of your early filing date.