From the March 1999 issue of Entrepreneur

The question I get asked the most is, "If I don't have enough money for a patent, what else can I do?" In the long run, a patent is the only way to protect your invention. However, in June 1995, the U.S. Patent and Trademark Office (PTO) created another way to protect your invention and buy you some time. For a small fee, you can file a provisional application for a patent.


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To Save and Protect

The provisional application was created to provide an inexpensive way to file an initial application for a utility patent. (Provisional applications for design inventions are not allowed.) To that end, it allows an applicant to file without providing all the information required for a standard patent application, such as patent claims, oath, declaration, information disclosure statement and all prior ideas that could be similar to yours.

So what do you get when you file a provisional application? For starters, you get to establish an early effective filing date on your invention, avoiding, at least for a while, the considerable time and expense of an official patent application. In effect, a provisional application holds your place in the patent application line.

This type of application also allows you to mark your product with the notice "Patent Pending" for one year, should you place your idea on the market. This notice serves as a warning to potential copiers that you are protecting your idea.

The provisional application for a utility patent also provides a quick and inexpensive way to test an idea's commercial potential before you make the expensive and time-consuming commitment involved in filing a formal patent. The fee for a standard utility patent is $380, while a provisional patent as an individual applicant costs only $75, and it gives you some security against having your idea stolen during its commercial promotion.

Unlike a patent, which is eventually disclosed, a provisional application is always kept confidential. Additionally, you could file many provisional applications for a patent on an idea and then consolidate them into one formal patent application within a year of filing the first provisional patent. This is of great benefit should you discover more patentable qualities after filing the initial provisional application: You won't lose the opportunity for inclusion as you would with a formal application, which can't be altered once it's filed.

A formal patent application requires all inventors of the idea to be included on the application. If you fail to include a name or wish to exclude a name, there's quite a bit of paperwork involved, which can prove to be expensive. With a provisional application, submission or omission of an inventor's name is simply achieved by the filing of a petition.

Should you decide, after one year, to turn your provisional application for a patent into a formal patent application, the result will be protection for 21 years from the provisional application filing date.

Words to the Wise

As wonderful as this type of application sounds, I have a few words of caution. You should know that a provisional application for a patent is not examined on its merits. Therefore, don't assume that because you have a provisional application on file, you'll automatically receive a patent when you file a formal application.

Also, when you disclose your invention, be as complete and comprehensive as possible. If, for some reason, the claims in your formal application aren't supported by your earlier provisional application, you won't be allowed to use the filing date of the provisional application. Also, there must be at least one common inventor on both the provisional and nonprovisional applications, or you not only lose your place in the application line, you forfeit the rights to your idea altogether.

There are some additional rules you need to follow to keep your provisional application legitimate. You must file a formal patent application before the one-year deadline. If that deadline falls on a Saturday, Sunday or federal holiday, your formal patent application must be filed beforehand. If you take no action to turn a provisional application into a formal patent application within the one-year time frame, the application will automatically be abandoned by the PTO. Also, filing a provisional patent without the appropriate cover sheet and filing fee will result in a surcharge of as much as several hundred dollars.

Although a provisional application (as well as a formal patent application) can be filed without the help of an attorney or agent, it's highly recommended that you at least consult with one or the other before filing. The laws and filing procedures are very complex; it would be a shame to unknowingly make a mistake and have it negatively impact your invention. For a listing of patent attorneys and agents in your area, you can go to the PTO Web site (http://www.uspto.gov) or call (202) 512-1800.

Strategic Planning

Intellectual property attorney Robert Chiaviello of Baker & Botts LLP in Dallas has some sound advice for anyone filing a provisional application for a patent. "When discussing your idea with someone else, never tell them if the application you have on file is provisional rather than formal," he says. If they know it's provisional, according to Chiaviello, they know you'll probably wait a year before starting the formal patent process. A competitor can put your idea on the market and sell it with impunity during your "patent pending" phase. If they know your filing date, they know they have one to three years before your patent will be issued. You should keep all filing dates a secret to protect your idea from competitors who make a business out of bringing ideas to market before the rightful owner of the idea can get a patent issued.

Starting the Process

If, once you examine the pros and cons carefully, you decide a provisional application is a good idea for your invention, you can begin the application process. The nuts and bolts of filing a provisional application for a patent are pretty straightforward. Here's what you need to include:

  • A written description of the invention
  • Any drawings that will aid in the understanding of the invention
  • The names of all inventors
  • The appropriate filing fee. This must be a certified check or money order made out to the Commissioner of Patents and Trademarks
  • A cover sheet identifying your patent application as provisional

The cover sheet, which labels your application as a provisional one, must include the inventor's name(s) and residence(s), invention title, attorney or agent information, a correspondence address, and the name of any U.S. government agency that might have a property interest in the application. You can download a sample cover sheet from the PTO Web site. The cover sheet form number is PTO/SB/16.

For more information on provisional applications for patents, you can call the Office of the Deputy Assistant Commissioner for Patents Policy and Projects at (703) 305-9285. For a copy of a brochure on provisional patents or to listen to general patent information, call the PTO General Information Services Division at (800) 786-9199