There are valid reasons why large organizations rely on initially filing provisional patent application. It may provide a filing date and time to sort out which ideas are commercially viable and worth pursuing.
My opinions below are from the standpoint of an individual or startup looking to file to protect their idea and rapidly get underway commercializing their idea.
There is no such thing as a provisional patent per se. The U.S. patent office does not grant a provisional patent. The term “provisional patent” only applies to an application process.
A provisional patent application requires follow-up with a full-fledged utility patent application. This must occur within one year. It is only possible to file a Provisional Patent Application for utility patents.
Why file the provisional if you need to file a regular utility patent application anyway? Good question. A provisional patent application is quick and less expensive to prepare. And it gets you a filing date.
America Invents Act
In 2011 the America Invents Act (AIA) changed U.S. patent laws. One of the big changes was going to a “first inventor to file” system. This change harmonized the U.S. with most of the rest of the world’s patent laws.
This system puts a premium on filing an application ASAP.
An early filing date exploits the first to file advantage. The time prioritizing of your claims is the primary benefit of a provisional.
There are risks.
You run the risk of not filing the utility follow-up on time. And after one year your invention goes into the public domain and you have lost out.
A provisional application is seductive. It’s quick, easy, and less expensive to prepare. It gets you a filing date and it does allow you to use the term “Patent Pending” on the invention. But make sure you are not being lazy and deferring the heavy lifting.
Provisional applications are not examined. In contrast to the regular application, the provisional format has less formal requirements. A provisional application doesn’t required formal patent claims, an oath or declaration. Provisional applications also should not include any prior art disclosure.
After filing a provisional, you must file a non-provisional within 1 year.
The non-provisional application is more detailed. But the discipline of the process ensures your invention meets the approval criteria.
Hard Work Pays Off
Think hard about filing a provisional application. It rarely makes sense. It is my opinion that provisionals are not worth filing. It creates more work and extra costs. It kicks the can down the road of doing the real work.
Don’t bother getting caught up in the extra step and expense of filing a provisional. Go for the gusto! Do the work and file a utility patent. Hard work pays off.
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