"Ok, I filed a provisional patent. Now what?"
Updated: Apr 28
The person or corporate entity that was the first to file their idea as a provisional patent or a comprehensive patent application is the rightful owner of that official registration recognizing the invention. A provisional patent application filed to the USPTO by a recognized patent agent, buys you more time (under a year the moment it is filed) to draft a proper patent application. Again, a provisional patent essentially provides proof that you intend to protect today's idea within a year.
Furthermore, because your patent provisional is not examined, the applicant avoids the higher costs associated with a standard patent application prosecution (i.e. drafting, attorney's fees during office actions, etc.) for 12-months. During that timeframe the applicant can spend more time determining if the invention is commercially viable or curry up additional funds for the standard patent application.
Failure by an applicant to file a patent provisional often leads to the inadvertent public disclosure of their invention (e.g. "To be honest, we went ahead and launched it because we didn't think it was patentable."), in which case one must thoughtfully consider their remaining intellectual property rights. In the United States, if a patentable idea is disclosed publicly (with no provisional or non provisional patent protection), you can still file your U.S. patent application provided it is within one-year of the first offer to sell your invention, or within one year of the first public use (or disclosure) of that invention. A simple calculation determining the first official offer to sell date, or the date of first public disclosure, determines your legislated rights to an invention that may still be available. If that crucial point in time is more than a year from that offer to sell or public disclosure date, it is unfortunately too late for you to file a patent application.
"A disclosure made more than one year before the effective filing date of the claimed invention is prior art..." https://www.uspto.gov/sites/default/files/ip/global/grace_period.pdf
Filing a provisional patent application secures a filing date. If a nonprovisional patent application is filed within a year from the filing date of the provisional patent, the applicant inherits the filing date of the provisional application.
Note: In Canada (CIPO), the "provisional" process is similar to the USPTO, albeit less popular, and it amounts to filing an incomplete patent application to achieve the same effect.
Please note that the USPTO does review provisional patent applications only to ensure sure they fulfill the minimum filing requirements. Provisionals are never published by the USPTO. And (I saved the best part for last), the applicant can use the term "Patent Pending" during the one-year pendency of the provisional patent application. This means the applicant is legally protected when describing the particular invention using the 'patent pending' designation.
The applicant of a provsional patent application maximizes the potential recovery of damages with an infringer when/if the patent is issued/granted by the USPTO (not before). Damages are calculated based on the date the perceived infringer received notice, in which case the merit in marketing your invention using the patent pending designation becomes clearer.
For startups, patent pending status allows you to strut your technology with potential seed capital investors and deters others from absconding your idea or product from you during that critical phase.
When in doubt, first contact Planetary IP and we'll get you the answers you seek and file a provisional or nonprovisional patent application in a timely manner to protect your innovation.
These Terms and Conditions of Use apply to you when you view, access or otherwise use the blog located at https://www.planetaryip.com/https-www-planetaryip-com-blog (a.k.a. the “blog”). The blog is owned by Planetary IP, Inc (“Planetary IP”). We grant you a nonexclusive, nontransferable, limited right to access, use and display the blog and the materials provided hereon, provided that you comply fully with these Terms and Conditions of Use.
(1) No Attorney Client Relationship. We provide this blog for general informational purposes only. Planetary IP is not a law firm, yet some of the information on the blog relates to legal topics. We want you to understand that this does not create an attorney client relationship with you when you use the blog.
By using the blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and Planetary IP. Do not consider the blog to be a substitute for obtaining legal advice from a qualified IP attorney or patent agent licensed in your province or state. The information on the blog may be changed without notice and is not guaranteed to be complete, correct or up-to-date. While we try to revise the blog on a regular basis, it may not reflect the most current legal developments. The opinions expressed at or through the blog are the opinions of the individual author and may not reflect the opinions of the firm or any individual attorney.
(2) Disclaimer; Limitation of Damages.
(a) Planetary IP expressly disclaims all liability for any information published; or, viruses or other contamination of your computer system or other device used to access this blog as a result of your use of this blog, and expressly disclaims all liability for actions taken or not taken based on any or all of the contents of this blog.
THE BLOG IS PROVIDED “AS IS”, WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE, SECURITY, ACCURACY AND NON-INFRINGEMENT. WITHOUT LIMITING THE FOREGOING, PLANETARY IP MAKES NO WARRANTY OR REPRESENTATION, EITHER EXPRESS OR IMPLIED, THAT ACCESS TO OR OPERATION OF THE BLOG WILL BE UNINTERRUPTED OR ERROR FREE.
(b) USE OF THE BLOG IS AT YOUR OWN RISK. YOU ASSUME FULL RESPONSIBILITY AND RISK OF LOSS RESULTING FROM YOUR DOWNLOADING AND/OR USE OF FILES, INFORMATION, OTHER COMMUNICATIONS, CONTENT OR OTHER MATERIAL (INCLUDING, WITHOUT LIMITATION, SOFTWARE) ACCESSED THROUGH OR OBTAINED BY MEANS OF THE BLOG.