Provisional Patents

Uses and Limitations

Appropriate uses

Provisional patents serve as a cost-effective and less formal method for inventors to establish an early priority date for their invention. 

The priority date determines the order in which potentially overlapping applications are considered to have been filed. Of these, only the first to file will receive patent protection.

Similarly, if a public disclosure of the invention is imminent and there's no time to prepare a full utility application, filing a provisional application can safeguard the priority date. This strategy is particularly useful when presenting at trade shows, publishing research papers, or engaging in other forms of public disclosure that could potentially jeopardize patent rights if not managed correctly. 

Strategic Use

Pro tip: If you are drafting a provisional patent application, make it broad. 

A provisional application must be followed within a year by a regular patent application filed by an attorney. By keeping the provisional application broad, you allow the attorney to claim priority from the date of filing the provisional application for as broad a set of claims as he can. 

Remember, patent applications are a series of claims, going from the most general to the most specific. By filing a broadly worded provisional application, you give your lawyer greater leeway in drafting the regular application while still claiming priority under the provisional application.

Limitations

Provisional patents have limitations that we must understand.

A provisional patent application is not a full patent. It won't turn into a patent on its own and cannot be enforced to protect an invention. Instead, it's a preliminary step that allows inventors to quickly and inexpensively establish a filing date for their invention, which can be claimed later in a non-provisional, or regular, utility patent application.

Here's the catch: the priority date established by a provisional application is only valid if the inventor files a non-provisional application within one year. 

If this deadline is missed, the priority date — and potentially the patent rights— are lost. This ticking clock underscores the importance of understanding the provisional patent application process and its strategic use. Moreover, inventors aiming to file their patents internationally must be aware that disclosing the invention in a provisional patent application can lead to the right to file in certain countries being forfeited. This can have significant implications for the global protection of an invention.

Inventors typically look to provisional applications because they do not have the time or money to file a regular patent application. 

This means they cut corners and submit a less complete provisional application than they would a regular application. Remember, the priority date established by a provisional patent application is limited, in scope, to the information disclosed in it. This means that a hasty and amateur provisional patent application will only provide limited priority for the regular application that follows it.  

The question, therefore, arises — Is it better to use the time or money spent on the provisional application to just submit a regular application a little later? The answer to this question is specific to the individual facts and circumstances.