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 The Inventor's Mentor

April 2011

The Pros and Cons of Provisional Applications

A provisional application offers an inventor a simple, low cost option of securing a filing date for protecting his invention. It is cheaper than a regular patent application, the current USPTO filing being only $110. It does not need a signed declaration or oath and does not require an information disclosure statement (IDS) which is a list of the relevant prior art known to the inventor. And since the writing of a provisional is simpler, the fees to the patent practitioner are also lower. In addition as soon as the provisional is filed, the inventor can label his invention with “patent pending” as a warning to would-be infringers.              

 Provisional Applications are NOT Patents. They are NOT examined by the USPTO. They are simply put in storage for one year after which they are discarded. To be of real utility and provide the benefit of their early filing date, they must be followed within a year of filing by a non-provisional application that refers to the provisional.           

Provisionals Provide Greater IP Flexibility. A benefit from filing a provisional is that any amendment to the invention can be rolled into the non-provisional when it is filed. More than one provisional can be rolled into a non-provisional provided that they are all filed within a year. These amendments are new matter, receive their own filing date, and therefore do not benefit from the protection of the first filing date.

Poorly Written Provisionals Give no Protection. A provisional application is only useful if or when someone else files the same invention after the provisional filing date. It becomes then a documented proof that the inventor was the first to file. In this event, a process called interference may be initiated at the patent office, in which both applications are evaluated. If there is overlap between the patent applications a well written provisional will prevail. A poorly written provisional by someone not familiar with patent law is an illusory shield that gives you no protection.               

It is therefore critical to remember that a poorly written provisional is an absolute waste of time and money. On the other hand, a provisional written with care and attention to patent law can easily be refiled as a non-provisional. Expenses incurred for the provisional can be recouped when the non-provisional is filed.   

Be careful of patent promotion companies who file your patent at a greatly reduced price. They will just take a copy of your submission to them and send it to the patent office without any change to it. You can do this yourself without their help.

 The specification and drawings need to be complete, broad in terms of what is described and specific to make sure the application is meeting all patentability requirements. A well written provisional will include all the requirements of a non-provisional including a description and drawings detailed enough to enable someone versed in the art to build the invention, and at least one example of the best implementation mode. Filing at least one claim is recommended. Cutting corners on the provisional makes it useless.

 Provisionals Extend Patent Life. An advantage of filing a provisional followed by a non-provisional is longer patent protection. The life of a provisional is one year. The life of a non-provisional patent extends 20 years from its own filing. When a non-provisional application is filed near the end of the provisional’s life the total protection extends to nearly 21 years.

 Provisionals Delay Date of Award. The disadvantage is a delay of the patent award. Because provisionals are not examined, they postpone the examination of the invention by the USPTO, lengthening the prosecution and delaying up to a year, the date of the patent award. Given that the USPTO currently has a huge backlog (about 5 years for software inventions,) filing a provisional also postpones the time when royalties can be collected. In addition, a provisional may not be as convincing as non-provisionals to investors who may need to know for sure whether the patent will be awarded. Filing a provisional followed by a non-provisional reduces the upfront cost but is more expensive in the long run.         

Provisional are great for small independent inventors with limited means and incompletely defined ideas, who need patent protection while they test the profitability of their invention during the initial manufacturing and marketing phase.       

The best advice for the inventor is to file a provisional if the invention is not clearly defined and in a state of constant improvements and if the competition is intense.

 On the other hand, when the invention is clearly defined and stable, when competitive activities are minimal and when the inventor is convinced of the profitability of his invention, he should apply directly for a non-provisional patent.               

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 This newsletter should not be construed as being legal advice.         ©2008 by George Levy