FAQ – Foreign (Non U.S.) Patent Application

Q: What is a provisional patent application?

A: It is a special type of patent application offered by the United States that has fewer requirements and fewer/different benefits than a standard (non-provisional) patent application. If you have an active provisional patent application covering technology that was not disclosed more than one year before the filing date of your provisional patent application, you are patent pending in the United States. If you filed the provisional patent application before any public disclosure or sale, you are patent pending in the world.

Q: What are the benefits of a provisional patent application?

A: Because it has fewer requirements, it will be less expensive than a standard patent application. It is also not examined by the US Patent Office (USPTO), so you, generally, cannot be rejected. It is often a faster and less expensive way to become “patent pending.” It also provides the opportunity to “try out” an invention in the marketplace or in the capital market to see if it can gain traction without paying the full patent costs. It also allows you to continue to develop the invention as improvements can often be included in the eventual non-provisional application at a cost savings. Also, you can include multiple inventions in a single provisional patent application. Just be sure to separate them out in later filings.

Q: What is the downside to a provisional patent application?

A: A provisional patent application adds to the file history of the application and therefore may introduce vulnerabilities. It also will generally delay the potential granting of a patent registration by about one year. For some businesses, that is a benefit instead of a downside. Most importantly, a provisional patent application expires one year from the filing date. To continue the benefits of the application, one MUST file a non-provisional patent application before that expiration. This deadline is simultaneous with the deadline for filing foreign patent applications, so the stacked costs can be difficult to handle if you are not prepared. Filing a provisional patent application will typically increase the total cost of a patent by a few hundreds to a couple thousands of dollars.

Q: What if I cannot meet the one year deadline?

A: If you fail to meet the one year deadline for filing a non-provisional patent application, you have almost certainly lost important rights. However, you may be able to recover some of those rights depending on the extent and timing of your disclosures/sales to the public of your invention/idea. If your earliest sale or public disclosure was less than a year ago, you have given up your foreign rights virtually entirely, but you have a deadline of a year from your earliest disclosure/sale to file a new provisional or non-provisional patent application. If you meet that deadline, you may be able to recover/preserve substantial rights.

Q: How much do provisional patent applications cost?

A: A typical provisional patent application that seeks to appropriately satisfy the written description requirement, the enablement requirement, and provide some support for the doctrine of equivalents will cost approximately $2,500 – $4,500 depending on the technology. You can spend more than that for more developed claims, claims and support for foreign (EU, Japan, Canada, etc.) applications, professional drawings, and/or other features. The more you spend, the more value your application will provide in the future and that value may result in a stronger application, better protection, and/or cost savings in the future. You can spend less on a provisional patent application, but doing so almost always means you are assuming risks that the application may not satisfy all the requirements or provide the support you are expecting. The cheapest application is one you file yourself for jus the government fee ($110 as of April 2010), but the risks you assume are very great.

Q: Will people be able to see my application?

A: Not at first. A provisional patent application is not published by the USPTO and is kept confidential until it is referenced in a published patent application. Even then, the provisional application is not published, but instead available on request and for a fee. There are ways to keep your patent applications from publishing until they are issued as patents. This can help extend the secrecy of what you put into your provisional patent application, sometimes by years and years.

Q: When should I consider having a provisional patent application filed?

A: If you need an application filed ASAP, if you have a low initial budget for your intellectual property, if you are not very confident that your technology will do well in the marketplace, and/or if you want to extend the total life of your patent by a year, you should consider how a provisional patent application can meet your needs. If you are in a situation opposite, you may be better off skipping the provisional application.

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