The Problem with Provisional Patent Applications

Some TV commercials and websites offer the inventor the ability to file a “patent application” at extremely low cost.  One example is LegalZoom(TM) which, at the time of this writing, offers the inventor the ability to file a do-it-yourself patent application for only $199 plus the fees charged by the U.S. Patent Office.

This may sound like a good deal until one understands exactly what one is getting for one’s money.  In almost all cases like this one, the vendor is only offering to file a “provisional” patent application for the inventor.  A provisional patent application is very different from a non-provisional patent application.  Unlike a non-provisional (regular) patent application, a provisional patent application is automatically abandoned after one year.  It is never examined and never matures into a U.S. Patent.  So in order to obtain a U.S. Patent, a non-provisional patent application must be filed within one year of filing the provisional patent application.  If you do not follow up in this manner, the provisional patent application will simply expire and you will have achieved nothing.

What a provisional patent application does do is allow the inventor to obtain a “priority date” without the need to initially file a full-fledged non-provisional patent application.  In other words, it gives you an extra year to work on the non-provisional patent application.  Typically, the earlier the priority date you can get for your invention, the better off you are.  Generally any developments by others after the priority date of your particular patent application cannot be used to reject your invention as being not novel or obvious.

The other thing that must be understood about provisional patent applications relates to the quality of the application.  Many inventors believe (and I think some of the vendors want you to believe) that a provisional patent application can be informal and can be quickly put together without regard to quality or scope.  This is far from true.  In order to obtain a valid priority date for your invention, a provisional patent application must contain most of the elements found in a non-provisional patent application.  It must, for example, explain your invention in enough detail that someone else could practice your invention “without undue experimentation.”  As a result, a provisional patent application should not be something that is casually thrown together.  Rather, preparing an effective provisional patent application may require about the same time and effort as preparing a non-provisional patent application. 

For this reason, I advise most of my clients to forego the filing of a provisional patent application unless there are some special circumstances that allow only a provisional patent application to be filed (for example, insufficient financial resources or insufficient time).  The overall cost of initially filing a provisional patent application and then following up with a non-provisional patent application a year later will necessarily cost more than initially filing a non-provisional patent application and skipping the provisional application altogether.