What are the benefits of a filing provisional patent application?
1. Enjoy less formal requirements
The reduced formality threshold of provisional patent application filings offers a number of significant advantages to the inventor and entrepreneur.A first advantage is that since the formality requirement for a provisional application is greatly reduced as compared to a nonprovisional application (less attention needs to be paid to form and format), the cost of preparing and filing a provisional application can be significantly lower. This is especially true when an entrepreneur has put together a writeup of the invention, including a complete set of figures describing his invention, and is able to either file his own application or turn the materials over to a patent attorney for filing with very little revision required.
Since the provisional application delays the need to file a nonprovisional patent application for 12 months, this pendency period can be used to evaluate the merits of the invention. For a small entrepreneur this might mean 12 months in which to seek either a licensee for the invention, or funding to proceed further with product development. For larger companies, the use of provisional patent applications enables a 12 month period during which to decide which applications will provide the greatest value to the company and deserve further investment.
2. Secure foreign priority
A second advantage of the provisional application process is that it provides foreign priority for subsequent patent applications filed in countries that are signatories to the Paris Convention. The Paris Convention is an agreement among most of the commercially important countries of the world – roughly 165 countries are members – which recognizes patent priority in each of those signatory countries. However, filing a patent application in the United States creates a priority date which can be used to establish priority in any Paris Convention country, assuming that the inventor also files one or more patent applications in any of those Paris Convention countries within one year of the United States filing date. Although this can be an important feature of the provisional patent application process, foreign patent applications are very expensive and should only rarely, if ever, be sought by the first time inventor or start-up entrepreneur.
3. Get promoting!
A third advantage in filing a provisional application is that it enables immediate commercial promotion of the invention. An almost universal fear among inventors is that their inventions will be stolen from them and commercially exploited by others. For small inventors and would-be entrepreneurs, the fear of having someone else steal their invention can instill paralysis and inhibit the idea-sharing and promotion that are essential for commercial success. Filing a patent application, whether provisional or nonprovisional, enables the creation of a potential monopoly which, upon patent issuance, will enable the patent holder to exclude others from making, using or selling products embodying the invention. By filing a lower-cost provisional application at the earliest possible date, the inventor can begin promoting the invention, seeking licensees and partners, and raising money to develop and commercially exploit the technology. From this standpoint alone, provisional applications can be extremely valuable to the small inventor.
For the larger company, provisional patent applications enable discussions with manufacturers and vendors at an early stage, with reduced concern that the technology will be stolen and sold to competitors. Inventors can also use non-disclosure agreements to contractually prevent confidantes from disclosing or otherwise using the technology. However, non-disclosure agreements should only be used with those who can be trusted to keep the confidence. If a recipient of confidential information discloses that information without authorization, the genie is out of the bottle, notwithstanding any non-disclosure agreement, and there may be no duty on the part of information-receiving third parties to honor the original non-disclosure agreement.
4. Get an efficient, short-term solution
A fourth advantage of the provisional patent application is that this is a relatively efficient and cost-effective way of protecting an invention during the early development process. One of the features of provisional patent applications is that multiple provisional applications can be referenced by a later-filed nonprovisional application, combining their ideas into a single document. This can be particularly useful when an invention is undergoing development.
For example, an invention might originally start out as a backyard lawn chair for poolside use. After completing the initial design of the lawn chair, a provisional patent application is filed and construction of the lawn chair begins. Some weeks later, the inventor may realize that carefully selected construction materials can enable the lawn chair to float. A second provisional patent application is then filed, including the improvement of constructing the lawn chair out of a buoyant material. As a third, if not contrived, improvement to the now-floating lawn chair, the inventor next adds cup holders, an ice chest and other conveniences, for which a third provisional patent application is then filed. At any time until the one-year anniversary strikes midnight for the first provisional patent application, the inventor can incorporate all three provisional applications into a single nonprovisional application, claiming priority for each of the improvements from their respective filing dates. While invention and development continues, this successive filing process is an inexpensive way of collecting improvements within one patent application.
5. Secure an extra year of protection
A fifth benefit to filing a provisional patent application is that the provisional filing effectively adds an additional year to the term of the patent grant. Since a patent’s term is 20 years from the date the nonprovisional application is filed, starting the process with a provisional application shifts the expiration of the patent out by one year to 21 years after the filing of the provisional application. Although for many inventions this extra year at the end of the term is of little consequence, certain inventions, such as prescription drugs, are most valuable towards the end of their patent terms, as marketing and time have worked to increase product potential.
Learn more by visiting our microsite Provisional Patent Help, a resource to discover, understand, and file provisional patent applications.
Contact John Ferrell at JFerrell@carrferrell.com if he can further assist you.
About the Author
John Ferrell is a founding partner of Carr & Ferrell LLP, one of Silicon Valley's foremost technology law firms, and specializes in patent and intellectual property law matters. He is the Chair of the firm's Intellectual Property Practice Group.