The Disadvantages of a Provisional Patent

By Shelly Morgan

The phrase “provisional patent” is shorthand for provisional patent application. There is no such thing as a provisional patent. Filing a provisional application is a convenient way to get the earliest filing date possible while preparing the full application. However, filing provisionally presents substantial risks that must also be considered.

Pendency Period

By filing a provisional patent application, you set a 12-month clock called the pendency period. During the pendency period, the United States Patent and Trademark Office does not examine the application on its merits. Before this period is over, you must either file a regular patent application claiming the priority of the provisional one or convert the provisional application into a regular one. Only then will the USPTO examine the application. If you do not follow up, you may lose the right to file for a patent on the invention.

Increased Cost

The initial cost of filing a provisional patent application is slightly less than the cost of filing a regular application. While this may appeal to cash-strapped inventors, the savings is illusory. In addition to paying fees for filing the provisional application, inventors must also pay regular filing fees when they file the regular application or convert the provisional application. This could end up costing you a few hundred dollars, depending on the type of patent you are seeking.

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Increased Risk

An inventor cannot sell, publish or publicly use his invention in the U.S. more than one year before he files a patent application for the invention. Inventors who engage in such acts during the pendency period risk their right to patent the invention if they inadvertently let the provisional application lapse without converting it or filing a regular application.

Minimizing Risk

Provisional patent applications typically contain limited information because the inventor is pressed for time or is uncertain about the scope of the disclosure. Disclosing partial information is not the best practice because only the disclosed information will receive the early filing date. If you must file provisionally, the best practice is to disclose as much as possible about how to make and use the invention. By making as full a disclosure as possible, your invention will be protected if you have to convert it into a regular application at the last minute.

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What If a Full Patent Is Not Approved and You Have a Provisional Patent?


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What Do I Do if My Patent Lapses?

Patents provide inventors with exclusive rights to make, use or sell their inventions or processes. Patent rights originated in Article 1, Section 8 of the U.S. Constitution and aim to promote scientific progress by granting rights to inventors for a period of time. The Patent and Trademark Office, or USPTO, administers patents in the United States. Most patents continue for up to 20 years but will lapse if regular maintenance payments are not paid. If your patent lapses, you have a limited period of time to petition for its revival.

How to Fill Out a Provisional Patent Application

Filing a provisional patent application allows you to establish temporary patent protection without starting the patent term running. This means that once your invention is granted a patent, you may file a lawsuit against anyone who infringed your patent rights after the date you filed your provisional application. A provisional application is considered automatically abandoned after 12 months: Within that time you must file a non-provisional application with the U.S. Patent and Trademark Office (USPTO) to keep your application alive.

How to File a Software Patent

A patent protects the legal right of the patent holder to prevent others from using or profiting from his invention without his authorization. Although copyright law protects software, it is possible to patent software in the United States. Software patents are a type of utility patent. They are controversial because critics contend that they discourage innovation; in fact, many countries refuse to grant software patents. A utility patent expires 20 years after the patent application is first filed with the U.S. Patent and Trademark Office.

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