Provisional patent applications can be of great benefit in protecting innovation. They must be used, however, with a full understanding of the limited protection provided.
A provisional application is a patent application. It is a type of a utility patent application. It may be thought of as a temporary application good for only for 12 months. It creates certain rights and protection provided other actions are taken within the 12 months. It is not possible to extend the fixed 12 month time limit.
The cost of filing a provisional application is low. For a small entity (less than 500 employees) the filing fee is currently $140. For a Micro-Entity, the filing fee is $70. See my article regarding Micro-Entity Discounted Fees.
A provisional application is not published so the information remains confidential.
The rights that are provisionally created are only as good as the description of the invention contained in the provisional application. Although the formalities of application are relatively relaxed, the description must still comply with 35 USC Section 112. What this means is that there must be a full disclosure of the invention. The description must satisfy the requirement of “enablement”. Stated in other words, the description, including drawings, must contain the detail needed to teach someone how to make or use the invention. The description can include variations, but in must sufficiently disclose the invention. You are not permitted to hold back the “good stuff”.
A self test is whether you believe someone knowledgeable of or skilled in the field that your invention deals with, could pick up and read the description (and any drawings) and then make your invention.
Remember the application is good only for 1 year. If you don’t file a “formal” non-provisional application referencing the provisional by name, serial number and date in the first line, the provisional automatically goes abandoned. See Patent Application Elements for a description of what is required for a non-provisional application.
As a basic matter, a provisional application and drawings must be on 8.5 x 11 white paper. The drawings can be informal. The drawings can be hand drawn as long as they are appropriately labeled and correlated to the written description. The description must have a title (the title of the invention).
The application should include the one page cover sheet that can be downloaded from the USPTO website www.uspto.gov. See form No. PTO/SB/16 entitled “Provisional Application for Patent Cover Sheet”. The title of the invention should be filled out in the indicated space, along with the name and residence address of each inventor and an address for correspondence (filing receipt). The filing status of the applicant can be declared, i.e., a small entity if applicable. A disclosure must also be made if the invention was made under a contract with a US Government agency. The form must be dated and signed.
It is also necessary to fill out and file the multi-page Application Data Sheet (ADS). This form is also available at the USPTO.gov website. See form PTO/AIA/14.
It is not necessary to file an oath or declaration of inventor. It is also not necessary to file any patent claims.
The application can be electronically filed via the USPTO EFS-Web system. It may also be mailed, along with payment, to
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.
I encourage use of the USPTO EFS-Web system for electronic filing. The documents must be in a pdf format. The USPTO website is awkward (and frustrating). However there are help lines.
Filing can also be achieved by U.S. Post Office Express Mail (Post Office to Addressee) service. You can enclose a stamped, self addressed post card to confirm receipt.
The USPTO does issue a receipt, but it may not be received for at least several weeks. What is important is that the receipt will contain the serial number and filing date of the application. The filing date controls the start of the 12 month clock. Remember, after 12 months, the provisional goes abandoned unless a utility application is filed referencing the provisional application by name, serial number and filing date.
Keep in mind that your provisional application will not be examined to determine whether you have sufficiently disclosed the invention. You don’t have an opportunity to amend the provisional application and if the description doesn’t meet the enablement standard, there may be a fatal flaw. You are, however, entitled to file multiple provisional applications (at $140 each) and roll them all into a single non-provisional application before expiration of the earliest 12 month deadline. This gives you a chance to add more information plus update the description to include additional improvements as you continue to develop the invention.
I typically encourage inventors to promptly (but thoroughly) prepare and file provisional patent applications. That is a personal preference. I believe it can provide an early “effective filing date” for your invention. Remember of course that since 2013, the US has recognized the “first inventor to file”, as eligible to receive patent protection. You may want to look at my other articles, including DIY Provisional Applications.
Copyright David McEwing, 2021