Inventors often have many questions related to patent filing and some general ideas about patenting. But the question that I am asked many times is about the procedure, costs and how/where to start. I usually advise inventors to go for provisional patent application (called as a provisional specification in India) first. This post provides a basic overview of provisional applications, and lists out the pros and the cons. It would be beneficial to inventors who are looking forward to take their first step in patents; and it would be beneficial to prospective patent agent exam takers at our patent office.
A provisional application is named as provisional because it is not complete and acts as a placeholder for a later complete specification. Therefore, it is the first document that is filed at a patent office in relation to a prospective patent.
It provides excellent benefits when compared to the costs. An inventor gets some time (one year) from the date of filing the provisional specification to file a complete specification. The first benefit is the filing date of the provisional is accorded to the complete specification at the time of examination with respect to what was disclosed in the provisional. The second benefit is in terms of costs. Costs for a provisional are extremely low as compared to a non-provisional/complete specification. The benefit is in terms of simplicity-an inventor can herself file the provisional application because it needs no claims. A provisional application is proof that the inventor had the concept and idea at the time of filing of the provisional. Inventors get an additional time (1 year) to work on the provisional application. However, care should taken to ensure that the material is disclosed properly in the provisional application. Inventors working alone, should ensure that they disclose their invention adequately in the provisional. In case, relevant material is left out and the inventor later wants to include it in the complete specification, then she may not get the benefit of early filing with respect to the material left out.
The first benefit is the most important: Because the provisional specification entitles an inventor to a filing date, the early filing by the inventor prevents any other related inventions from becoming prior art to the inventor’s application. Simply put, this means that any application whether provisional or not, filed after the filing date of the provisional cannot be used as prior art against the invention disclosed in the provisional application.
The second major benefit is in terms of costs. The inventor has the option of filing a complete specification at a later date and can therefore defer costs. A provisional application does not require any claims; there is generally no requirement of a prior art search or exhaustive and detailed drawings-hence the inventor can file the provisional application herself. The time period of 12 months made available to inventor after filing the provisional may be used for researching on the value of the application/patent, the market, discussion with investors and the like.
Because there is almost no downside of filing a provisional application, it is strongly recommended. In addition, the most recent amendments to the US patent laws, discussed here, actually encourage provisional application filing.