What is a patent?

Patents are grants made by national governments and protect new inventions. They give the owner the right to stop others from making or selling their invention. By giving protection to a person or company that invents something new it prevents others from making, using, importing or selling the invention without their permission, for a fixed period of time.

What is a provisional patent application?

A provisional application is not required to have a formal patent claim or (in the US) an oath or declaration. US Provisional applications also need not include any information disclosure (prior art) statement since provisional applications are not examined. A provisional application provides the means to establish an early effective filing date in a later filed non-provisional patent application.  It also allows the term "Patent Pending" to be applied in connection with the description of the invention.

You will need to file a non-provisional patent application within 12 months of the filing of your provisional patent application in order to claim the benefit of that provisional filing. 

To make it clear, a provisional patent application is nothing more than the first step towards receiving a patent

If you are still working on your invention you should be filing a provisional patent application and not a non-provisional application because you cannot add anything new to a non-provisional patent application.  You would therefore have to file a fresh application, potentially wasting the official fees that were paid on the first application.

What are the benefits to a provisional patent application?

There are substantial benefits to starting with a provisional patent application -

1. A cost effective way to initiate the patent process as they are cheaper to prepare and file because there are no formal requirements.
2. Inventors can work towards perfecting the invention and seeing if there is a market before completing the non-provisional patent application. There might be things you want to make better, things you need more time to research and develop and in many cases you are seeking to obtain patent pending status before you have 3D renderings, engineering drawings or even an intermediate prototype. 
3. You can take some steps to market the invention without fear of losing patent rights – but check with your patent attorney first.
4. The Patent Office will not do anything with the provisional patent application until you file a non-provisional patent application claiming the benefit of the priority of the provisional patent application filing date. This means no more PTO fees and no additional attorney’s fees until you want to go ahead.

We’ve talked about the benefits but one thing you should remember when preparing your provisional patent application is that ‘a poorly prepared provisional patent application simply offers no benefit whatsoever, and can affect you later on.’ You should still take the initial process very seriously.

Why use a patent attorney?

You can both prepare and file the provisional patent application yourself or you can bring in the services of a patent attorney to take care of the process for you. There are many benefits to investing in a patent attorney, we’ve listed a few of them below –

1. They have the skills and experience to ensure the application has been prepared and filed correctly.
2. They will ensure all deadlines are met when filed to being granted, and beyond
3. The process will be less time consuming.
4. They will take the time of your hands to allow you to focus on the invention itself.
5. They will track any recurring renewal fees and ensure fees are met.
6. They will ensure the invention you wish to patent gets the best possible protection in the countries where you intend to market it.

Michael Downing, Patent Attorney at Downing IP has a wealth of experience in preparing and filing provisional patent applications. “It’s important to discuss your commercial plans around the invention with your patent attorney, as well as the invention itself.  That way, we can advise on whether to just file a provisional application at this stage, with a view to coming back to it later, or crack on with a full and complete application so that we can obtain some feedback from the Patent Office before deadlines start to loom ahead“.

For information on our intellectual property services and how we can help you file a provisional or non-provisional patent application please contact us on 01494 422626.