Clients seeking intellectual property protection to prevent others from using their inventions and safeguard their profit margins often ask, “provisional or non-provisional utility patent application?” Here’s a breakdown of the pros and cons, building on the insights from the Inc.com article by Michael Lechter (https://www.inc.com/resources/startup/articles/20070701/mlechter.html).
Pros and Cons of Filing a U.S. Provisional Patent Application
Pros:
Simplier Filing: Provisional applications don’t require claims and have fewer formalities, allowing for quicker and less expensive filing.
Establish Earlier Filing Date: You can obtain an earlier filing date, providing a one-year window to file your formal non-provisional patent application.
Cons:
No Examination by USPTO: Unlike non-provisional applications, provisionals are not examined for patentability by the U.S. Patent and Trademark Office (USPTO).
Increased Total Cost: While cheaper initially, a provisional adds to the total patent cost because you still need to file a non-provisional application within a year and pay provisional application filing fees.
Poorly Prepared Provisional Allows Others To Challenge The Patent: To be effective, a provisional application must adequately describe the invention for someone skilled in the art to reproduce it and meet enablement and other USPTO requirements. A poorly drafted provisional application might not support the claims in the later non-provisional application, jeopardizing your priority date and potentially invalidating any issued patent that you obtain.
Limited Enforceability: A provisional application itself cannot be used to enforce patent rights or sue for infringement. Only an issued non-provisional can be used to enforce your patent rights.
When is a Provisional Application Appropriate?
Unavoidable Public Disclosure, Use, Offer For Sale or Sale: When there’s an upcoming public use, sale, offer for sale, or disclosure of the invention (e.g., conference presentation or publication), which could prevent you from obtaining an issued patent and time constraints prevent filing a non-provisional application, a provisional serves as the next best option.
What has been your experience with U.S. provisional patent applications?
Sincerely,
Steve Hassid
