Inventors who wish to receive a patent on their invention and the patent attorneys who represent them are faced with deciding which type of patent application to file. When seeking protection for the way the invention is used and how it works (versus how it looks), an inventor may decide to start by filing a provisional application or they may decide to jump straight into filing a non-provisional application — depending on the circumstances. 

Non-Provisional vs. Provisional Patent Applications

A non-provisional application is a formal application filed with the United States Patent and Trademark Office with the goal of obtaining a patent on an invention. A Non-provisional patent application should include a comprehensive description of the invention, including its technical specifications, drawings, claims, and any supporting information that would allow a person having skill in the art (PHOSITA) to understand the invention. In order to obtain patent protection on an invention, a non-provisional application must be filed. 

There are situations where it may be more appropriate to file a provisional patent application first. A provisional application is a patent application that serves as a placeholder, allowing the inventor to receive a filing date and use the phrase “patent pending” while providing the inventor with more time to refine and further develop their invention before filing a non-provisional patent application.  

What are the Pros of Filing a Provisional Patent Application? 

One of the main benefits of filing a provisional patent application is that it provides the applicant with an “effective filing date.” An effective filing date, also called a priority date, is important because when two inventors apply for a patent for a similar invention, the effective filing date will determine which application takes priority. The effective filing date establishes a starting point for patent protection that is being sought for the invention. 

The effective filing date is used to determine whether another patent, patent application or publicly available document qualifies as prior art against an inventor’s patent application. Therefore, the establishment of an earlier filing date is significant with regard to the patentability of an invention.

A provisional patent application provides the applicant or an assignee with a priority date for a period of 12 months, during which time the phrase “patent pending” may be used while the invention is further developed or tested, or funding is sought. The use of “patent pending” warns consumers and potential competitors that patent protection has been applied to the invention.  A provisional patent application is not published, as such the applicant or an assignee if afforded the benefit of confidentiality.

What Are the Cons of Filing a Provisional Patent Application? 

While filing a provisional application comes with many benefits, provisional applications have limitations. Although the cost to file a provisional application is less than the cost to file a non-provisional application, going the route of filing a provisional application causes the total cost of the patent process to be higher. 

Provisional patent applications are never examined by the patent office and therefore, they do not undergo a thorough review to determine the patentability of the inventions disclosed. The inventor’s claims and description of the invention are not assessed by a patent examiner for novelty, non-obviousness, or usefulness during the provisional application stage. 

A provisional application expires after 12 months and its owner may lose its priority date if a non-provisional application is not filed prior to the expiration of the 12-month period. 

A provisional patent application is not a patent and as such cannot be used to sue a third party for patent infringement. 

Final Thoughts on Provisional Patent Applications 

Filing a provisional application may be advantageous in certain situations. If you have questions about whether a provisional patent application may be the right first step for you contact one of our New York City patent attorneys today.