Inventors often ask their patent attorney whether filing a provisional patent application for their invention makes sense. This article answers the general questions about filing a provisional patent application, so that you can focus on the specifics of your case when you meet with your patent attorney. The US Patent Office defines Provisional Application for Patent here.
Filing A Provisional Patent Application Locks In A Filing Date
The United States was one of the last (if not the last) country to adopt the so-called “first-to-file” patent system. Under first-to-file, it does not matter when two inventors may conceive their invention. It only matters when the inventor files their patent application. And filing a provisional patent application counts as a filing with the US Patent Office for securing that filing date. Other benefits of a provisional patent application are discussed here.
Provisional Patent Applications Cost Less
A full utility patent application can cost thousands of dollars. Even the government filing fee is several hundred dollars. The government filing fee for a provisional patent application is right around $100. And the law firm fees to prepare and file a provisional patent application are often a fraction of the cost to prepare and file a full utility patent application.
You Can File More Than One Provisional Patent Application
While you can file more than one utility patent application if your invention changes (to cover any changes to your invention), that costs a lot more. Whereas if you file multiple provisional patent applications, those can all be combined into a single utility patent application. Be sure to check with your patent attorney for the correct filing deadlines if you employ this strategy.
Provisional Patent Applications Count As Priority Under The PCT
Provisional Patent Applications are recognized as priority patent applications, just as a utility patent application, by members of the PCT. That means you can file foreign patent applications based on your provisional patent application.
While some patent attorneys recommend filing a full utility patent application, and indeed some attorneys will not even file a provisional patent application, this is typically based on misperceptions or the attorneys desire to earn a higher fee. Talk to a patent attorney that has experience filing provisional patent applications, who can help guide you with a strategy appropriate for protecting rights in your invention.