August, 2nd, 2018

By Stephen F. W. Ball, Jr. & Sean E. Paquette

A provisional application is a type of U.S. patent application that is “informal” in the sense that there are no requirements for acceptance. It does not need to have any specific content or formatting and does not need related papers such as an inventor’s oath or declaration. In fact, a provisional application is never even examined by the Patent Office. However, provisional applications are a valuable tool to secure a filing date, providing an applicant one year to file a non-provisional patent application and claim priority to the provisional application. This provides flexibility in a filing strategy, so an applicant can use the additional time to consider whether to proceed with a utility application in the U.S. or abroad. In addition, the invention can be marked “patent pending” once the provisional application is filed.

Because a provisional application is informal, it is a cost-effective way to initiate the patent process. Government filing fees are significantly less than a non-provisional application because there are no examination fees. Attorneys’ fees are also significantly less because there are no requirements for formal drawings or claims. In fact, here at WHIPgroup, we quote flat rate fee options for drafting provisional applications. Having a qualified patent attorney draft a provisional application can significantly reduce overall costs for the patent process because it effectively splits up the cost for a later, non-provisional application.

Another key benefit of a provisional patent application is flexibility. In many circumstances the invention that is initially conceived will not be the invention that is ultimately patented. Therefore, filing a series of provisional applications followed by a non-provisional application within 12 months of the first provisional application is an option to secure the earliest possible filing date, while also covering multiple variations of the invention. There is opportunity to add to or elaborate on the disclosure each time a new application is filed. In addition, an applicant can later choose to file a PCT application, delaying national stage entry fees further, or may even abandon the patent process before incurring significant costs. Provisional applications do not publish, so the applicant can keep the invention secret.

However, it is important that a provisional application adequately describe the invention to provide a priority date. In New Railhead Mfg., LLC v. Vermeer Mfg. Co. and Earth Tool Company LLC, Vermeer and Earth Tool were sued for infringing US Patent 5,899,283 (“the ’283 patent”) directed to a drill bit for horizontal rock drilling. 298 F. 3d 1290 (Fed. Cir. 2002). The ’283 patent claimed priority to a provisional application with two drawings showing an “exploded” view of a drill bit. Neither drawing showed the bit attached and Earth Tool argued the utility application was not entitled to the priority date because the provisional failed to adequately describe the claimed invention having a “drill bit angled with respect to the instrument probe housing.” The court agreed, and the ’283 patent was not entitled to the priority date of the provisional application. As a result, the ’283 patent was found invalid due to the sale of the drill bit more than one year before the filing date of the non-provisional application.

Utilizing provisional patent applications is a cost-effective way to seek patent protection and quickly secure a priority date. However, it is important to have sufficient detail in the application for entitlement to a priority claim. Follow these tips to successfully make a provisional application part of your strategy:

  1. Draft at least one claim, which will help identify novelty in the invention;
  2. Prepare at least one complete figure and fully describe it in the specification, which will help to assure that the invention is adequately disclosed; and
  3. Always file a patent application, whether provisional or utility, before publicly disclosing or offering the invention for sale.


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