What Are Provisional Patents? (In Plain English)

Originally posted on September 18, 2016 @ 8:59 pm

Often, the first idea you cook up for a new invention isn’t what ends up being patent material. Tweaking and digging deeper are key parts of the journey. But sometimes, inventors find themselves in a spot where nabbing a patent-pending title is good for their biz before they’ve dotted all the i’s and crossed all the t’s on their design or whipped up a prototype. When you’re in this pickle, laying out everything for a full-blown patent application seems like a tall order because you’re still working out some of the kinks. That’s where snagging a provisional patent comes in clutch. It throws a protective shield around your invention while you hammer out the fine print.

The provisional patent application (PPA) takes some of the pressure off of the patent process by giving inventors way to claim “patent pending” status on their invention for a fraction of the effort and cost of a traditional application, albeit only for a limited time. Like all patent applications, a provisional patent effectively protects you from facing any statutory bars that would prevent you from manufacturing and selling your idea, as well as preventing others from manufacturing and selling your idea. It is essentially a short document written in plain English that consists of text and drawings describing your idea. It is much more informal than a regular patent and requires none of the arcane legal jargon. (For more on filing a provisional patent, see NOLO’s guide on Provisional Patent Application Procedures.)

When done correctly, a PPA establishes an effective filing date and allows you to claim “patent pending” on your invention for 12 months thereafter. Filing a non-provisional patent for that invention within that 12-month window then allows you to claim the PPA filing date as proof that your invention was filed before a competitor’s. It’s important to understand PPAs as the first step in filing a non-provisional patent and not an alternative to a non-provisional patent, as they only offer you protection for a short time. You will ultimately need to file a formal patent application to complete the process and fully protect your idea. However, there are marked benefits of filing a provisional patent first, as long as you know what pitfalls to avoid and remain wary and knowledgeable.

So what benefits does a provisional patent offer?

1. It offers an expedited way to protect your invention
2. It costs less to file than a traditional patent
3. It buys you time to consider how to produce and market your invention
4. It gives you legal protection as you negotiate production

Until recently, inventors could legally prove a date of invention that preceded filing a patent by documenting the building of a testing process. The U.S. adopted a first-to-file system on March 16, 2013, meaning that the first person to file a patent for a given idea is given rights to that idea. Under this law, it is in the best interest of the entrepreneur who wishes to profit from the legal protection of a patent to file sooner rather than later. While an inventor can of course file for a traditional patent application and begin to negotiate with manufacturers while they are in the purgatory of non-provisional patent-pending (manufacturers generally won’t risk ripping off an idea if there is risk of a patent infringement lawsuit), the time crunch can sometimes make it difficult to flesh out a viable patent in time to file before competitors. A proper patent application can also be a lot of time, energy, and legal expenses, meaning one should have a very clear idea of their invention and what they want out of it before filing. For more on considerations to make before filing a patent application, see how and when to file a patent.

An Expedited Way to Protect Your Invention

PPAs allow you to forgo some of the more complicated aspects of a patent application, such as the Patent Application Declaration (a statement made under penalty of perjury that you are the true inventor and have disclosed all known information relevant to the examination of the application) and the Information Disclosure Statement (a statement disclosing all the information known to you related to the originality of your invention). Even though the provisional patent does not require the same degree of detail as a full patent, it is still important to be careful in the wording used to describe your idea. A poorly done provisional patent may mean that you do not get any benefits from your idea—or worse, it may be used to demonstrate that at the time of filing you were not in possession of the designs for a particular invention, which is definitely not a best-case scenario.

A Cheaper Way to Protect Your Invention
PPAs are a valuable tool for anyone with a tight budget, i.e., nearly everyone in the patent world. No one has the money to protect every whimsy of an idea with non-provisional patents, but when you have a potentially patentable idea, you still need to take responsible steps to secure your rights. That’s where a PPA comes in. A PPA costs $65 for a micro-entity, $130 for a small entity and $260 for a large company. PPAs also end up costing much less in legal fees thanks to the lack of formal requirements. Between the lawyers and patent searches necessary to prepare a non-provisional patent, the application can end up costing into the tens of thousands of dollars. Additionally, unless you file a non-provisional patent claiming priority benefit of the PPA filing date, the U.S. Patent office will not do anything with your PPA, meaning no additional PTO or attorney fees unless you decide to move forward with your invention. While the financial benefits can be enormous, remember that you should not move forward impulsively, as a PPA can still end up being a waste of time and money if poorly prepared.

A Way to Buy Time in a Competitive Market

Since it’s best to obtain patent pending status as soon as possible in the current legal climate, you should consider filing a PPA once you have an idea that is concrete enough to describe. Then, as you take steps towards filing a non-provisional patent, you can make improvements to your original PPA, or even file a new PPA if your idea changes substantially from your first draft.   This allows you additional flexibility in the development of your idea, as new subject matter cannot be added to a non-provisional patent once it is filed. If you are still in the development stages of your invention, you should definitely consider filing a PPA over a non-provisional patent.

A Way to Protect Your Idea During Business Negotiations

Most potential manufacturers can be trusted to be honest, but even so, there are few inventors in the market to patent an idea that would rely solely on trust when disclosing an idea to negotiate a deal. At the same time, most manufacturers are very understandably unwilling to sign binding non-disclosure agreements before even seeing an invention. (However, these business relationships do take place. You can learn more about trade secrecy and inventions at https://nondisclosureagreement.com/). In terms of your own business interests, it’s important to remember that under the America Invents Act, passed September 12, 2011, public sale of your invention or disclosure of your idea prior to filing a patent can interfere with your ability to obtain patent protection. A PPA allows you legal protection over your idea while you finalize the business plans needed for a non-provisional patent.

A word or two on disclosure

Unless the ideas in your PPA are disclosed properly, you will not benefit from an earlier filing date. When describing your invention in a PPA, you should disclose as much as possible to make sure your ideas are legally protected. There have certainly been many inventors with provisional patents who, upon filing for a non-provisional patent, were disappointed to find out that someone else had patented an aspect of their invention that they left out of the original designs. However, as stated before, improperly describing your idea at this stage can lead to problems if the idea changes significantly from the original blueprints. It is important to make sure that you have developed your idea and business strategy so that you can describe them in sufficient detail and avoid these complications down the line.

That means no cutting corners. Even though a PPA is much less formal than a non-provisional patent (and therefore, a bit less work for your lawyer), it still must provide a complete description of the invention that is broad in terms of what is covered, but specific enough to meet all patentability requirements at the time of filing. What do I mean by complete? Generally, a patent is considered to provide a “complete” description of the invention if someone familiar with the technology is able to make and utilize the invention using solely the patent application that is filed. Basically, your provisional patent should read like a good instruction manual for assembling and using your idea. For further protection, it should also include any alterations or variations that occur to you during the development process.   If your invention begins to generate income, competitors will inevitably appear and try to gain access to your market. The more savvy competition is not going to infringe upon your rights, but will instead seek to approximate your invention as closely as possible without technically mimicking your idea. Therefore, you should think of your invention in terms of ‘what works’ and not just ‘what works best’ to make sure you are legally covered.

Whether or not a PPA is the correct move depends on your business plans, the stage of development of your invention, and the relative benefits of disclosure. While a PPA can seem like an entrepreneurial dream come true, it’s important to seriously consider all of these things before moving forward with any patent application. If the correct considerations are made, however, a PPA can offer you an excellent way to legally protect your intellectual property while allowing you time to iron out the fine details in order for the more involved non-provisional patent application.