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Frequently Asked Questions about Provisional Applications

What is a provisional application?

A provisional patent application is a description of an invention that can be submitted to the United States Patent and Trademark Office (USPTO) to serve as a placeholder application for securing the patent right without having to meet the requirements associated with a regular, non-provisional patent application. A provisional application does not undergo examination and needs to be followed by the submission of a non-provisional application within one year of the provisional application filing date in order to be examined at the USPTO and to determine whether a patent should be granted on the invention.

Why should you file a provisional application?

The cost of filing a non-provisional application may be a significant investment for an individual or a start-up company. Also, it is not always easy to determine whether a patent application should be filed for an invention since the invention may be protectable instead as a trade secret in some cases. Even if the issue of how to best protect an invention has not been resolved, the applicant can begin the process of securing rights to the invention by filing a provisional application which can be prepared in a relatively short time with a relatively small budget while buying the applicant time (i.e., 1 year) to find investors, gauge market demand for the invention, decide what form of intellectual property is suitable for the invention, request a patentability search to determine if there is prior art that could prevent the patenting of the invention, or conduct a freedom-to-operate investigation to determine if making or selling the invention is likely to infringe someone else's patent.

If the applicant later decides not to proceed with a non-provisional application, the applicant can simply let the provisional application expire and its content will not be disclosed to the public.

When should a provisional application be filed?

Some example situations are before disclosing the invention to a third party (e.g., investor, potential collaborator or customer) or before launching the invention in the market.

What information must be included in a provisional application?

In order to effectively secure the patent right as of its filing date, the provisional application must disclose the invention in sufficient detail to allow a person of ordinary skill in the field of art to recreate the invention, and such recreation should be possible based on the disclosure without an excessive amount of experimentation. Generally, sufficient disclosure of the invention will entail a written description that details the new (i.e., "novel" and "non-obvious" in patent terminology) features of the invention which are also illustrated by way of drawings.

The disclosure of the invention should be enabling in that it enables a person of ordinary skill in the art at the time of the invention to recreate the invention without undue experimentation. For example, the disclosure need not provide every dimension of an apparatus invention and some experimentation may be required by a person of ordinary skill in the art to recreate the invention even after having read the disclosure. But if information that is essential is left out thus making it impossible to recreate the invention even with experimentation, such a disclosure would not be enabling. If you are not sure whether a certain piece of information is necessary for enablement, it is better to include such information in the application.

For the sake of expediency or cost reduction, a description prepared by the inventor(s) could be used as the disclosure of a provisional application. However, such practices may lead to a situation where priority to the filing date of the provisional application cannot be established due to insufficient disclosure of the invention in the provisional application.

Therefore, instead of preparing and submitting a provisional application on your own, we recommend at the very least having the description reviewed by a patent practitioner to determine whether the provisional application satisfies the aforementioned standard of disclosure before the application is submitted to the USPTO.

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