Updated 22 Dec 2021
Provisional patent applications are misunderstood by many inventors, investors, and even patent attorneys. There is a notion that somehow a provisional patent application is good for inventors and startup companies.
Let me be clear: there is nothing worse than a provisional patent application from a business standpoint. There is no reason why any inventor/small business should ever file a provisional patent application to “protect” their intellectual property. Ever.
Every other website – including the USPTO – claims that startups “benefit” from a provisional patent application. But here’s the truth:
A startup always benefits from getting their patents fast, not by delaying their patents.
What is a provisional patent application?
A provisional patent application *delays* examination by up to a year. You can – sometimes – get an extra year of patent term than you would otherwise.
When is this useful? When you are Big Pharma who makes all their money at the end of a patent term. If you are a solo inventor or a startup company, the *faster* you get your patent, the better, which is why you should always file a non-provisional patent application.
“I do provisionals because I don’t have the money”
When I ask business owners why they chose to delay their patents by getting a provisional patent application, they often say something about the cost. If your provisional was not good enough to file as a non-provisional patent application, then you have something that is either worthless or dangerous.
A provisional might be worthless because it does not actually “protect” you, since it did not meet all the disclosure requirements of a non-provisional patent application.
A provisional might be dangerous because *you think you are protected*, so you feel comfortable disclosing the patentable idea. If this happens, you can lose your international rights unknowingly.
By the way, BlueIron will finance the cost of your patent applications, but only when your patents are Investment Grade.
“My invention is so bad, I’m not willing to spend the extra $600 for the non-provisional filing fee”
This is the message you are saying when you file a provisional application and get “patent pending” status.
Investors know that the cost difference between a provisional and non-provisional patent application is about $600.
By filing a provisional, your *actions* say that you don’t believe that the patent application was good enough for that extra $600 filing fee. But at the same time, you are trying to convince the inventors that the invention was really great. Not a compelling sales pitch.
Some angel investors are gullible and do not know the difference. However, if your fund raising requires gullible investors, maybe getting a provisional patent is the right thing. But is that they kind of entrepreneur you want to be?
“I want an early filing date”
Many entrepreneurs are lulled into a provisional application because they are told that an “early effective filing date” is a good thing. In most cases, this is a red herring.
You do, indeed, get a United States Patent application by filing a provisional application. However, the patent law changed in 1995 which dramatically changed the value of an “early filing date.”
Your priority filing date actually works against you, and will become prior art that hurts you down the road.
Most patents reach their highest value at year 12. Historically, it takes that long for the market to adopt new technologies, even in the “fast” changing software/electronics/communications fields. The only reason why year 12 is the peak is because patents expire at 20 years, and years 13-20 are nearing the end of life, when there is not much juice left to squeeze.
Entrepreneurs are notoriously optimistic about how fast they can get product to market. It can easily take 5, 10, or 15 years for a game-changing product to finally hit its stride. This is when competitors start to take notice and begin encroaching on the technology. Patents filed early will be most of the way expired at that stage, and the opportunity to use those patents has mostly past.
“I want to add more material to my patent application”
Another hoax is that provisional patent applications are designed so an inventor to “add material” at the one-year mark.
The truth is that we can add material whenever we want to a pending patent application. It is called a continuation-in-part application. This is done all the time with a nonprovisional application.
The cost of a continuation-in-part application? It is merely another filing fee of about $800 for a small entity.
CIP applications get two filing dates, just like provisionals. One filing date is applied to the original application, and a new filing date is applied to the newly added material. If the patent examiner finds prior art on your newly added material, the new filing date is the important one, not the older.
The artificial one-year filing date for the nonprovisional application serves no useful purpose to the applicant. It usually means a frantic rush to write a non provisional application, and that adds no real value. It would be best to file a CIP application when it makes sense for the business, not just file a patent application on an arbitrary date.
How to file a provisional?
A provisional patent application is a “regular” patent application where you literally “check the box” to file either a provisional or non-provisional patent application. Either way, once you file a patent application, you have patent pending status.
You can file your patent application – provisional or non-provisional – at USPTO.gov.
What is required to file?
Provisionals have every element of a “regular” patent application. However, you are not required to file claims in a provisional patent application.
This means you need a complete description of the invention. The description must “enable” a person of ordinary skill in the art to practice the invention. That means you need to be able to hand the patent application to a normal practitioner (such as a regular coder for software or a machinist for a mechanical invention) and they need to be able to make it.
In addition to the written description, you need to include figures (drawings) of the invention where appropriate.
One of the most common errors when the description is not complete enough. Many inventors know how they would build their invention but fail to completely describe it in a patent specification.
On the other hand, an equally serious error is putting too much information in the patent application. This creates a huge prior art problem for the company down the road. This was discussed in Episode 2 of the Patent Myths podcast.
What is the cost?
A provisional application costs about $130 for most inventors and small companies. But be aware that this is merely the filing fee you pay to the Patent Office.
The real cost of any patent application is the attorney’s time to draft the patent application. The US average cost is about $12,000 to write the patent application.
Is a provisional cheaper than a non-provisional?
No! You will wind up paying an extra filing fee. But the biggest cost is the time you lose. Sadly, most people waste an entire year waiting to file their non-provisional application. This is an extra year they could have licensed their patents. It is also delayed an entire year for when the patent asset could be used to raise money, borrow against, enforced, etc.
The United States Patent and Trademark Office often touts provisional applications as somehow cheaper, and many patent attorneys have jumped on the bandwagon. This is merely a marketing ploy that hurts the client but enriches the patent attorney.
The typical use of a provisional application is that the company claims to be cash poor but idea rich. The attorney writes up a “thin” provisional patent application, under the guise of getting an “early filing date” and this is somehow “cheaper.” A year later, the patent attorney has a bunch of leverage to get their client to pay for a nonprovisional application.
This is a pure marketing ploy that takes advantage of gullible clients.
Clients often see patents as a huge expense that adds little value, at least in the short term. Consequently, they are reluctant to pay for the patent “protection” that the attorney is selling. However, if the attorney can get the client suckered into a provisional application, the attorney just waits a year. Then, they can squeeze the client for a full-blown non-provisional patent application and get paid.
The client does not realize that the arbitrary one-year waiting period is not required or even good for them. It is purely a marketing fiction that the Patent Bar has successfully, but sadly, put into mainstream consciousness.
Provisional vs non provisional patent application
In every circumstance, a startup company is better off doing a non provisional patent application.
One of the biggest “reasons” why people choose a provisional patent application is because they want to delay their costs. Any time that an inventor chooses to wait to get their patent shows how little value that patent has for them.
If the patents will be valuable, spend money on them. If not, skip the patent process entirely.
A decision to delay getting a patent shows investors that you do not believe in the patent application enough to pay a measly extra $600 (the cost difference between a provisional and non-provisional).
And if your patent application does not give you $600 of value, you should not be wasting your time on it at all.
Provisionals are almost always wrong for your business.
In almost all circumstances, an entrepreneur or startup company should NOT get a provisional patent application. The main purpose of the provisional patent application is to *delay* the patent process, but for a startup, you want your patent as fast as possible. A delay is very useful for circumstances, such as pharmaceuticals, where most of the value of the patent is at the end of the patent term. This is not the case for almost all startup companies.
First, having an issued patent adds value to the company. With a patent in hand, the company’s valuation goes up when you raise money, and it gives the startup company protection in the marketplace. I have used the Patent Prosecution Highway or Track One to expedite the patent to try to get a patent within 10-18 months, not the customary 5-7 years.
Second, a “thin” provisional patent application does far more damage than you realize. Many people file a 1-2 page provisional patent application, then think they will come back a year later and pay an attorney to write a “full” patent application. Entrepreneurs often think that they are “protected”, so they go out and freely discuss their inventions with customers, investors, and the general public during the one-year period.
This creates a situation where you have two filing dates: a filing date for the provisional patent application and a second filing date with the rest of the material.
The “full” patent application probably has much more material that is needed to support the claims in the patent. This creates a very damaging problem: the provisional application is prior art against you on later patent applications, but it is not enough to support the claims. Your provisional will hurt all of your future patent applications.
All European and other international patent rights are lost through this process. The European Patent Office requires full support for claims in the specification. Since you didn’t have this support in the provisional, then you talked about the invention publicly before filing the non-provisional, your international rights are lost.
If the invention is truly valuable, there is no reason why you should not get an issued patent as fast as humanly possible. BlueIron does not file provisional patents and uses every trick in the book to get quality patents issued as fast as possible.