Updated 14 Nov 2021
Provisional patent applications are misunderstood by many inventors, investors, and even patent attorneys. There is a notion that somehow provisional patent applications are 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.
Every other website – including the USPTO – claims that startups “benefit” from provisional patent applications. 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.
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.
You can file your patent application – provisional or non-provisional – at USPTO.gov.
What is required to file a provisional patent application?
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 of a provisional?
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 patent application 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.
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.
Provisional patent applications 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 first one 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.