Provisional Patent Applications

BIG PICTURE

The patent process generally involves filing a patent application and undergoing examination at the patent office.  If examination is successful, a patent is granted and is enforceable for a limited term thereafter.  While this seems straightforward enough, keep in mind that the patent process involves the patent office (i.e. a government agency).  It shouldn't be surprising then that there are five different patent applications that can be filed to begin the process:  design, plant, provisional, non-provisional, and accelerated non-provisional.  Of these, the provisional patent application is the most desirable application for entrepreneurs because it delays expenses, tolls the patent term, and prevents public disclosures from harming future patent rights.  

FILE EARLY

The general idea is that you can't wait forever to file a patent application.  Indeed, the best practice is to file immediately upon conception of an idea and prior to any public disclosures.  This preserves your conception date as the actual invention date and provides for an early filing date at the patent office, which is the presumed invention date.  It also preserves all foreign filing rights for your invention and eliminates the need to enter the dark side of the Patent Act, namely 35 USC 102(b).  This law essentially prevents an inventor from filing a patent application more than one year after a public disclosure, use, offer for sale, or publication of the invention.  After this deadline, the invention is owned by the public.  In short, file early.  

CONTENT

Provisional patent applications don't have the same stringent rules as other more formal applications, namely the non-provisional and accelerated non-provisional application.  Technically, all that is required is an enabling disclosure that sets forth the best mode known for practicing the invention.  Enablement means that one skilled in the art could review the application and reproduce the invention without undue experimentation.  Best mode means the best way or method for practicing the invention.  This is generally accomplished with figures of the invention, which can be flow charts or even software code, and a corresponding written description.

FILING

Despite being a government agency, the patent office has finally succumbed to electronic filing.  Accordingly, the application can be filed online as a .pdf file with the patent office to obtain an instantaneous filing date and application number.  Be sure to include the provisional patent application coversheet or you'll be slapped with a frustrating $25 fee. 

FILING FEES

The current patent office filing fee for provisional patent applications is $105.  And, to express my gratitude to you for reading this far, I'll give you a valuable piece of information.  You don't have to pay the filing fee at the time of filing the provisional patent application.  Instead, you can just file the application for free and wait a couple of months for the patent office to send you a notice to file missing parts.  You then get at least another couple of months to pay the filing fee.  While there is a small $25 surcharge for doing this, the upside is that you get all the benefits of the provisional patent application along with a number of months to consider whether you want to proceed further with the process.

LEGAL FEES

I'd like to think that I didn't go to school for eight years, incur around $200k in debt, and pass both the Washington State Bar and United States Patent Bar exams for nothing.  While you can file your provisional application on your own, there is a pretty clear reason for having someone like me assist you in the process and it can be summed up in a single document:  The MPEP (www.uspto.gov/web/offices/pac/mpep/mpep.htm).  Like any other area of the law, my legal fees vary depend on the work involved.  However, unlike other areas of the law, patent applications are somewhat more project based and less sucesptible to hidden issues, so I'm usually able to provide a fairly accurate estimate of fees upon request. 

POST FILING

It is important to remember that filing a provisional application is not the end, it is a means to the end.  In fact, if you take no other steps after filing your provisional patent application your invention will almost certainly become owned by the public.  To avoid this irreversible result, you must file a non-provisional and any foreign or international patent applications within 12 months from filing your provisional application.  The non-provisional application is the very formal application that is examined approximately 6 months to 4 years after filing depending on a number of factors.