What You Need To Know About Provisional Patent Applications
A provisional patent application automatically goes abandoned after one year from the date of filing. Therefore, business owners must file a regular patent application claiming priority to their provisional patent application before the one year expires.
Business owners often ask “Then why should we file a provisional patent application if it goes abandoned after one year?”
Denver patent attorney Mark Trenner offers these four very good reasons for filing a provisional patent application:
- Filing a provisional patent application may be a good idea if you are watching your budget. As you will see below, provisional patent applications can be filed relatively inexpensively. After you file a provisional patent application, you can mark your invention (and any marketing materials describing your invention) as “Patent Pending.” This shows customers, competitors, and potential investors that you are serious about your invention.
- You have up to one year to test-market your invention before investing in a regular patent application. If your invention is a success, you can file a regular patent application and claim priority to your provisional patent application. If after 9 or 10 months you realize that your invention just isn’t being received that well, you can drop it and you haven’t spent that much money yet.
- If you will be making changes to your invention, the provisional patent application at least identifies those aspects of your invention that belong to you at the time of filing. Any changes and improvements can then be added to the regular patent application without having to file a separate application.
- A provisional patent application can also be evidence that the invention belonged to you if someone you share your invention with later claims that the invention is theirs.
What Is The Difference Between A Provisional Patent Application And A Regular Patent Application?
Denver Patent Attorney
A provisional patent application can be filed in the U.S. Patent Office for an invention, and will be pending for exactly one year from the date of filing. Provisional patent applications are never examined by the U.S. Patent Office. During this time, however, the business owner can mark the invention as “Patent Pending” or “Pat. Pend.” A provisional patent application automatically goes abandoned after one year from the date of filing, and so a regular patent application has to be filed claiming priority to the provisional patent application before the one year expires.
A patent attorney can help file regular patent application in the U.S. Patent Office. Unlike the provisional patent application, the regular patent application will be examined by an Examiner at the U.S. Patent Office.
The U.S. Patent Office typically takes 1-3 years (sometimes longer) before they examine a patent application. But during this time, and until the patent application either issues or goes abandoned, you are entitled to mark the invention as “Patent Pending” or “Pat. Pend.” In addition, there is nothing preventing business owners from licensing or selling rights in the patent application (e.g., to a manufacturer), or from selling the product of your invention. In fact, you should get started marketing your invention as soon as the patent application is filed.
What Is A Prior Art Search?
Denver Patent Attorneys
Business owners may want to consider a prior art search to find out what is out there that might be the same or similar to their invention. The prior art search can give business owners a better idea of the state of the art related to their invention.
Business owners are not required to conduct a prior art search before filing a patent application (or at any time, for that matter). But in some cases, the prior art search turns up references that are the same as, or so similar to their invention. If this is the case, and the business owner decides not file a patent application, then they’ve just saved thousands of dollars!
Even if the prior art search indicates that one or more feature of the invention might be patentable, it is still a good idea to have an understanding of other inventions that are out there already. These might be the competition and business owners can see how to make their invention even better.
Oftentimes, seeing what else is out there will prompt business owners to think of additional features or enhancements for the invention, that can help better distinguish the invention over competitors. This can not only be helpful in preparing the patent application, but also for marketing the invention.
Of course, there is no guarantee that the prior art search will uncover all relevant (or even the most relevant) references. This is simply because there is so much information available, that it would be impossible to find and evaluate every reference that is related to the invention.
Don’t Let Your Idea Become Public Domain!
The US patent law requires filing a patent application for inventions within a set time of various events occurring. These events trigger deadlines called “bar dates.” In the United States, the law allows one year from the date of first public disclosure, public use, publication, sale or offer for sale of an invention, in which to file at least a provisional patent application. Failure to do so prohibits (or forever bars, hence the term “bar date”) the filing of a patent application for that invention. In other words, if an inventor does any one of these things on December 1, 2010, then the inventor must file at least a provisional patent application by December 1, 2011, or the invention has essentially been donated to the public domain.
Most foreign countries have an even stricter standard – the invention cannot have disclosed at all prior to filing a patent application.
STOP READING right now if you have done anything which might be considered to have triggered a bar date, and talk to a patent attorney right away to discuss your particular situation.