Mark D. Hansing
McKee, Voorhees & Sease, P.L.C.

Not long ago, a new type of patent application was allowed in the United States.  Borrowed from European patent practice, it was touted as a cheaper, quicker way to get to “patent pending” status.  Called a “provisional patent application”, it dispensed with some of the formalities and requirements of regular patent applications, such as: formal drawings, formal written description (even hand written is acceptable), patent claims, cheaper filing fee (as low as $80.00, compared to a minimum of $370.00) and the inventor’s signature. The provisional filing fee is also lower - $80 compared to a minimum of $370 for a non-provisional utility application.

In many circumstances, these applications have several benefits - they are less expensive than a regular application and can be filed much quicker. (This can be important as earning "patent pending" status as early as possible may be the difference between getting a patent or not.)  But there are also aspects of provisional applications that do not make them an automatic choice, and which can result in a trap for the unwary.

The following are a few clarifications about US provisional applications:

Myth: A provisional application is a complete substitute for a regular application.
Fact: A provisional application gives only “provisional” patent pending rights.  By law, a provisional application must be converted into a regular application within 1 year of the provisional filing date.  If not, you may lose the ability to rely on the provisional application.  In some cases it could mean your chance for patent rights would be forfeited.

Myth: A provisional application need not be too detailed.
Fact: While frequently corners can be cut on some parts of a provisional application, one of the biggest misconceptions is the idea that a provisional can be a general summary of the invention, without details of how to make and use it.  On the contrary, a provisional application must meet the same standards as a regular application on this point - both applications must disclose details of the optimal way the inventor believes the invention should be built and used and both must have sufficient details and support to make clear that the inventor really came up with the invention that is ultimately claimed in the regular application.

Myth: A provisional patent application provides immediate protection from others copying my invention.
Fact: A pending provisional application does not allow you to sue another party for patent infringement.  A patent must be granted or issued to be enforceable in court.  To be fair, you can not sue based on a pending regular application either.  A provisional will not be examined for patentability.   The USPTO waits until it is converted into a regular application.  Therefore, a provisional application delays issuance of the patent and the rights which accompany the patent.

Myth: It is cheaper to file a provisional application first.
Fact: To obtain patent protection, the provisional application strategy requires two filings; the provisional and then the application.  Two filing fees also are required.  If the same person prepares both the provisional and the regular application, the expense unlikely would be double.  However, it inherently requires more cumulative time and resources than preparing and filing a regular application alone. Therefore, the total cost will be more.

In summary, provisional applications can be highly beneficial in certain circumstances. But, on balance, if sufficient time exists to prepare a regular application, this is the preferred route.

For more information on provisional applications you can go to the U.S. Patent Office web site www.uspto.gov and select “Patents” and then “Types of Patent Applications & Proceedings”, or select “Inventor Resources” from the pull-down menu on the lower of the two search term windows.


Mark D. Hansing is a patent attorney with the Des Moines-based firm of McKee, Voorhees & Sease, P.L.C. Mark practices primarily in prosecuting mechanical patents and electrical patents. For more information, log on to www.ipmvs.com or call 515-288-3667.