Provisional Patent Application

A provisional patent application is basically a complete description of the invention itself, but without the formalities of a full application, e.g. without claims that set the outer boundaries of the subject matter covered by the patent. Probably the greatest benefit associated with this method of filing are the substantially lower fees required to file with the patent office. Additionally, it is not likely that a tech start-up will need very much, if any attorney supervision in filing the provisional application, namely because it consists almost entirely of a description of subject matter well within the expertise of the original inventor. That said, attorney supervision is always preferable, namely because the provisional can only be utilized later on if the later filed utility application is fully supported by the disclosure of the provisional application. There is also the risk that a third party will challenge the later claim of priority back to the provisional application given that the inventors have not fully explored the scope of the invention, i.e. fleshed out the claims. An attorney will review the provisional with an eye towards the later filing, and will hopefully be able to root out any problems before they arise. In other words, an attorney can ensure that the written description, enablement, and best mode requirements are satisfied for the utility application to be filed within one year’s time.

The purpose of the provisional application is to claim the benefit of the provisional patent application date, and the protection afforded by an earlier date may increase the overall valuation of the portfolio and the tech start-up itself. Additionally, the provisional will grant the start-up an earlier effective prior art date against subsequent filers and inventors. The cost benefits discussed earlier are substantial for start-ups that are concerned with keeping costs down. Also to be considered is the leeway afforded to the start-up seeking to obtain foreign protection as well as US protection, but also interested in disclosure of the invention for the purposes of obtaining financing. Most foreign jurisdictions have what is called an “absolute novelty” requirement such that disclosure of the invention will automatically disqualify the patent application. However, by filing a provisional application in the US, most countries will recognize provisional application filing date through international treaties. In other words, the applicant can file a provisional application, and then convert it to a utility application to be filed in the U.S., but also in other treaty countries within 12 months of the provisional filing.

Despite the benefits of the provisional application, the start-up must remember to prepare for the imminent filing less than one year from the date the provisional is filed. The complete utility application is more expensive than the provisional, and the start-up will need to budget accordingly. Additionally, as the business progresses, and in light of the fact that technology today can advance rapidly in a matter of months, it is important to reassess the proposed patent filing to ensure that the patent as envisioned at the time the provisional was filed will ensure adequate protection to the tech start-up.

The provisional is a very useful tool for the tech start-up, but planning is key to the successful utilization of the provisional application process. Consulting an experienced patent attorney is the first step in ensuring that the process runs smoothly.