Patents can be applied for in various ways, and one of the important distinctions to understand is the distinction between provisional and non-provisional patent applications. A patent application is typically non-provisional; in other words, the application submitted is directly pursuant to obtaining a patent, with all of its rights to exclude others from making, using, selling, offering for sale, importing, etc. A provisional patent application, on the other hand, does not confer those rights. Instead, a provisional patent application serves as a kind of stopgap measure, usually taken advantage of when there are financial constraints that preclude the immediate filing and prosecution of a full-fledged patent application.

Tech startups may need to seriously consider the pros and cons of using a provisional versus and non-provisional patent application, given that access to capital is often constrained, and given the substantial costs associated with patent prosecution. On the one hand, a non-provisional patent application is the inevitable result of a provisional patent application filing; sooner or later, the money necessary to obtain a full-fledged patent will be spent, or else the money spent on the provisional application will be wasted. On the other hand, tech startups may be strapped for cash, and in need of creative solutions to lower costs while still keeping the lights on and the doors open. In such situations, a provisional patent application may be helpful because the United States Patent and Trademark Office (USPTO) fees associated with a provisional patent application are lower, and because a provisional patent application may not require the use of a patent attorney. Furthermore, provisional patent applications will preserve the priority date, i.e. the date on which the patent application will have been granted to the inventor. In other words, if a dispute ever arises as to who invented the underlying subject matter first, the provisional application may make the difference between victory and defeat in an interference proceeding.

Recent changes in U.S. patent law should be taken into account when evaluating the wisdom of submitting a non-provisional patent application. The American Invents Act changed the U.S. patent regime from a first-to-invent to a first-to-file patent system. What this means is that for patent applications filed after March 16, 2013, patents on inventions will be granted on a first come, first serve basis. Previously, the USPTO would consider claims by third parties as to who invented the underlying subject matter of a patent first, and would sometimes grant a patent to a latecomer that could prove they were the first inventor of the subject matter in question. Given that this is no longer the case as of March 16, 2013, the filing of provisional patent applications may increase once the law places additional emphasis on who files first. Additionally, companies may want to consider the changes coming into effect as of March 16, 2013, and perhaps do what they can to file either a provisional or non-provisional before that date in order to take advantage of the benefits of the old law. For such questions, it is best to consult an experienced patent attorney that understands these recent changes to the U.S. patent laws.