I’ll bet if you’ve been involved in any early stage startup, you’ve heard of a “provisional patent.” What is a “provisional patent”? How do you get one? And, what are the two words that founders love the most about leveraging these pieces of intellectual property?
Most Startups Like Yours Are Deciding Between 3 Types of United States Patent Applications.
When you’re considering patents in the United States, there are generally three types of patent applications you’ll consider: a utility patent, a design patent, or a provisional.
We’re going to split these into two categories, or “patent tracks” as I like to call them. The Utility track, which includes utility patents and provisionals, and the design track, which includes—you guessed it—design patents.
The Utility Patent Track
Let’s start with the Utility track.
This is what most typically are referring to when you hear “I’m getting a patent” or “I have a patent.”
The United States Utility Patent is the government giving you a monopoly over the invention you claim for a limited time. You have to show you have a novel and non-obvious invention that’s properly disclosed and eligible for patenting.
We’ll keep going here, but check out this video to learn more about what it means for an invention to be novel.
You get a utility patent by filing a Utility Patent application with the United States Patent & Trademark Office, going through examination, and then—hopefully—being issued a patent.
The other type of application on the Utility track is the provisional. But let’s hit the difference between the Utility track and the Design track first.
The Design Patent Track
Now, the Design track is very similar to the Utility track, but with a few key differences. Rather than applying for a Utility patent covering a novel and non-obvious invention, you apply for a Design patent covering a new, original, and ornamental design for an article of manufacture. This can cover everything ranging from a vase—or is it “vaase”?—all of the way to a GUI—or a graphical user interface (G-U-I) for the non-initiated.
The key to remembering the difference between the Utility track and the Design track is that the Utility track is for the functionality of a thing and the Design track is for the look of a thing.
Utility for function and design for look.
What is a Provisional Patent?
That’s a great question because I’m a USPTO-registered patent attorney, and I’ve never heard of one. What I have heard of—and frequently help startups leverage—is a provisional patent application.
Yeah, that one word makes a world of difference. Patent law can be very annoying. 🤣
A provisional patent application, or as we can shorten up to the industry-parlance “provisional,” is a type of patent application available only in the United States.
A provisional is a preliminary application that you can submit to do a few cool things that are super helpful for early stage startups, as well as startups and even enterprise companies that are innovating as they grow.
What can a Provisional Patent Application do for your startup?
A Provisional is like a bookmark.
Joshua Mertzlufft, Patent Attorney
I like to explain a provisional as being a bookmark on a date that can be used to show you invented your invention at least as early as that date.
Provisional patent applications don’t have a term of monopoly like a Utility patent or a Design patent, but live for 12 months.
Provisionals are not examined by the patent office, so by themselves they can’t turn into a Utility patent. But they can be used as a basis for one.
In other words, the provisional starts you out on the utility track. It gives you one year to file a full Utility application and—very importantly—use the filing date of your provisional as the effective filing date of your Utility application.
I’ll tell you why that’s cool in a second.
Plus, the extra time your provisional gives you does not count against your patent term. So it’s like having extra time, which everyone loves.
A provisional wins the race to the patent office. So you can start marketing—and selling—in earnest without worrying about a competitor snagging your idea and beating you to the patent office.
Now what else does the 12-month period a provisional is alive give you?
Does a Provisional Patent Application Make My Invention Patent Pending?
It’s time to answer the big question—what are the two words startups love the most about getting a provisional?
Patent. Pending.
Yes, that’s right. A provisional gets you to patent pending, and lets you mark—and market—your product or service as patent pending. And it lets you tell potential investors your product or service is patent pending—which can go a long way to showing you understand a key aspect of building startup valuation.
Which you can’t do in this country if you don’t have a patent application filed with the United States Patent & Trademark Office. Seriously—it’s a finable offense at $500 per offending article (for example, each individual falsely marked plastic cup, which is from a real case).
All that to say, “patent pending” has immense value.
I’ve written in another post how public disclosures or offers for sale by your or others can work against your ability to get a patent. A provisional helps here too, as it’s the date your provisional is filed that is used to find out if prior art counts against your Utility patent, not the date your full Utility application is filed.
If you have foreign patent ambitions, you can file foreign applications—or even international PCT applications—based on a U.S. provisional. This is super helpful, because of my next point.
Since the provisional is alive for 12 months, you have a whole extra year to decide on your patent strategy for that invention, without needing to worry about someone jumping in and beating you to the patent office. There are so many factors in these strategy decisions, and having a little bit of breathing room is almost always helpful.
What is something that always drives your patent strategy?
Cashflow.
Provisional patent applications don’t need claims, which are a major driver of the cost of a full Utility application.
Which takes us to yet another benefit of starting with a provisional: since your invention is patent pending and your own disclosures and offers for sale no longer count against you, you can start to do things like publicize, market, sell, test, and refine your product or service to see if you have traction before putting more resources toward a patent.
In other words, a provisional gives you the ability to delay patenting costs for up to a year while you safely work to gain traction.
Many startups find this extremely useful as you can imagine.
A provisional patent application stays a confidential secret between you, your attorney, and the government. It only becomes accessible to the public when you convert it to a Utility application and that Utility application gets published or granted.
I’d be remiss if I didn’t mention an important factor in a making a decision to file a provisional: that is, the provisional is on the Utility track and thus it leads to a Utility application, not a Design application. There isn’t a provisional Design patent application.
Now, sometimes, when the budget is available or when the desire is to get a patent as quickly as possible, some startups go straight for a full Utility patent. There are other reasons, and I’d be happy to discuss further with you.
Ultimately, there are some early strategy choices that need to be made based on the needs of your startup, and I hope this post has helped!
I love working with startups to plan—and then execute—the right strategy for protecting intellectual property. So, conversations about these tracks is something you could expect very early on in working with Stake as your startup counsel.
We covered the Utility patent track and the Design patent track, as well as why a provisional patent application is a helpful tool for founders to get to a status defined by two important words: patent pending.
If you want to learn more about intellectual property for startups, shoot me an email at [email protected] and let me know you want to see more content like this!
