It may be beneficial for an inventor to file a U.S. provisional patent application. However, it is important to recognize what a provisional patent application is and what it is not.
Firstly, a provisional patent application is not a U.S. patent. It is an application. Secondly, a provisional patent application will never result in a U.S. patent unless it is followed up, at least, with a timely filing of either a non-provisional patent application or a petition to convert to a non-provisional patent application. Thus, to obtain a U.S. patent, a provisional patent application is not required, but a non-provisional patent application or petition to convert to one, is.
Generally, if an inventor can provide sufficient support for a patent application, the inventor may be able to file a non-provisional patent application, without filing a provisional, thereby saving on the costs for the provisional.
However, the USPTO costs for filing a provisional application are lower than what is required for a non-provisional application. For example, for a micro entity, as of July 8, 2020, the USPTO fees due on filing for a typical provisional application are $70, while the USPTO fees due on filing (includes USPTO filing, search, and exam fees) for a non-provisional application are typically $430 assuming no extra claims fees or other additional fees.
Although the USPTO costs may be less for a provisional application, a provisional application like a non-provisional application must, at least, contain a written description of the invention satisfying all requirements of 35 U.S.C. §112(a), which include:
“(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” (for applications filed on or after September 16, 2012).
In addition, although the USPTO may provide a filing date for a provisional application even if no drawings are provided, any drawing necessary for the understanding of the invention should be provided on filing, or one may not be able to provide it later, potentially preventing an inventor from getting a patent or subjecting a potential patent to invalidity.
If a properly prepared provisional patent application is filed, it can be relied on for a priority date, generally, assuming a non-provisional patent application is filed within a year of the provisional application filing. However, failure to properly prepare a provisional patent application may prevent an inventor from getting a patent or subject a patent to invalidity.
An inventor may, for example, need a priority date of a provisional application to obtain priority versus another or to have an application priority date that is prior to the expiration of one year from the inventor’s own disclosure. Failure to obtain the priority date may prevent an inventor from obtaining a patent or subject a patent to invalidity.
If an inventor wants to rely on the provisional application filing date, the provisional needs to be done correctly, which arguably takes as much effort, and as much in attorney’s fees if you use a registered patent attorney, as preparing a non-provisional application, except generally, that a provisional does not require one or more claims, or an oath/declaration.
So when would an inventor want to file a provisional application?
If there is insufficient time or insufficient money to file a non-provisional patent application it may be helpful to file a provisional patent application. However, any provisional application should be filed by a registered patent attorney, with as complete a disclosure as possible, claims, and with drawings if necessary for understanding the invention. Although claims are not required for a provisional, it may be helpful to provide one or more claims. In addition, if an inventor files a provisional without the help of a registered patent attorney, which is not recommended, the inventor should keep the invention confidential, before, during, and after the filing of the provisional patent application, until a patent application is filed, as soon as possible, by a registered patent attorney with as complete a disclosure as possible, claims, and with drawings if necessary for understanding the invention.
If the inventor is not sure if they want to obtain a patent, they may want to file for a provisional patent application. This may sound strange since you would think that someone filing a patent application would want to obtain a patent. However, some inventors may want to file a provisional application with a complete disclosure, drawings, and claims through a registered patent attorney and may generally decide prior to the expiration of a year from the provisional filing date, that they don’t want to proceed with a non-provisional application, if the invention does not appear to be desirable in the market, or due to other reasons.
If the inventor does not want to continue to try to get a patent, the provisional application filing does not count for determining micro entity status in the future. Generally, an inventor may be able to claim micro entity status, and pay less USPTO fees for a particular non provisional application, if they have not previously filed for more than 4 non provisional patent applications, and if they meet certain income limitations.
Filing provisional applications, when an inventor is not sure if they want a patent, may help to preserve micro entity status and thereby save the inventor money on USPTO fees.