Provisional Patent?

Question

Hi! I've talked to another tech entrepreneur who said he got a provisional patent for his intention for little money while still in the bootstrapping phase. He said without that he couldn't have received the funding he attracted in the seed round. I'm inclined to believe him, but then what exactly is a provisional patent? If it's so cheap, why would I file for a "regular"patent instead? Obviously there is a difference, but maybe someone with more expertise can explain this to me, thanks!

Answers: 3 public & 0 private

25da12c4d3
Patent Attorney

He is referring to his filing a provisional utility patent application, not "getting a provisional patent." Filing a provisional utility patent application is a somewhat-abbreviated and generally less-expensive alternative to a non-provisional "regular" utility patent application. The main difference between a provisional and non-provisional application is that the provisional application generally does not have claims and it is not examined. A provisional application is filed primarily to get a priority filing date and if the applicant follows the provisional application with a non-provisional application within a year's time, the applicant can claim the provisional application's filing date as the priority date (at least for that matter in the non-provisional that was also disclosed in the provisional). Not only is it very advisable to at least file a provisional application before disclosing technological details, a prudent investor will want to see a startup take whatever steps available to protect its IP. In the long run, there isn't much that is "cheap" about the patent process – perhaps only the $65 micro entity provisional application filing fee. You should consult patent counsel in private to discuss your IP goals to get actionable advice.

Steven weinrieb
Patent Attorney

As noted by Adam, there is no such thing as a provisional patent - there is only a provisional patent application which can, by itself, never ever lead to a patent because the provisional patent application is never examined. You have to effectively convert the provisional patent application into a non-provisional patent application or a PCT patent application which will not only "open the door" to permit you to obtain patents in countries other than the US but you can effectively file a US national stage application at the appropriate time through means of PCT, and this has to be done within one year of filing your provisional patent application. If you are intending to obtain foreign patents, while claims in the provisional patent application are not necessarily required, it is highly desirable because, for example, in Europe, they effectively require the provisional application to have had claims, so to avoid any possibility of your priority of your provisional application not being "accepted" or the priority being "denied", I would highly suggest that you include claims. Another important consideration is that for the provisional application to serve as a basis for priority, the application must, as with a non-provisional application, comprise an enabling disclosure which, for all intents and purposes, means that it must be complete, accurate, and thorough. And this is true even if you are still in a development stage - file a provisional application on whatever you have already developed, and if you develop improvements, or other embodiments, you can file additional provisional applications for the additional improvements or embodiments. An easy and efficient way to do this is to use your first provisional application as the basis for your second provisional application, and then your non-provisional or PCT application can effectively be your second provisional application because that second application will contain everything that was in your first provisional application plus the improvements or new embodiments. Note that you must still file your PCT or non-provisional application within one year from the filing date of the first provisional application.

77f6bb54dc
Patent Attorney

I suspect the tech entrepreneur who you spoke with managed to attract funding because he had effectively used his provisional patent application as a "marketing" tool. As Steve mentioned, a provisional patent application provides you 12 months to make further developments to your invention. To investors, this may be an attractive proposition because not only does the filed provisional patent application secure a priority date for your invention, it also provides you the flexibility to incorporate further modifications and improvements to your invention into the "regular" patent application that has to be filed within the 12 month period.

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