One of the early decisions you’ll face as a founder in your startups’s IP journey is whether to file a provisional patent application or jump straight into a full non-provisional utility patent application. Each path comes with its pros and cons, and understanding the nuances can help you make good decisions to protect and position your startup in the marketplace.
Let’s explore these differences and help you decide which path is right for your invention.
The Basics of Patent Applications
When we’re talking utility patent applications, there are two types in the United States:
- The non-provisional utility patent application, commonly just known as a patent application; and
- The provisional utility patent application.
A patent application, in its complete form, is a technical document with a detailed specification, drawings, claims, and all necessary forms. The patent application is what eventually gets examined by the patent office during a period that can extend over two to five years. During examination, the burden rests on the patent office to prove why you should not get a patent, and then it can shift to you to demonstrate that your invention meets the criteria established by patent law, clearing hurdles like novelty and non-obviousness over the prior art.
If your patent application survives this process and matures into a patent, it’ll be presumed valid during it’s term. So, it’s important that your patent application is of high enough quality at the start to have a chance to survive examination.
The Cost and Timing Considerations
Filing a quality patent application does require immense effort and upfront investment. This is why nearly half of the cost of getting a patent comes in at the front end.
This presents a tough decision for startups balancing limited resources. The reason is simple: your startup is a new company. At this juncture, your inventive concept might be developed, but the commercial product, the very thing that competitors might want to replicate, may still be evolving.
The good news is that the patent law provides a streamlined way to “save the date.”
Introducing the Provisional Patent Application
A provisional patent application can be thought of as a preliminary utility patent application that acts much like a bookmark. It allows you to reserve a priority date with the patent office. This saves your startup’s “place in line” at the patent office in our first-to-file patent system while simultaneously setting the cutoff date—known as the priority date—for determining what constitutes prior art against your invention.
Filing a provisional patent application doesn’t yield a “provisional patent.” That doesn’t exist. This is a common misconception that, when you say it, can undermine your credibility.
The provisional patent application will both begin and expire 12 months later as only an application. Even so, it offers the strategic advantage of time while ensuring that your early disclosures and offers for sale—which might otherwise jeopardize getting a patent as being inventor-sourced prior art—are while your invention is patent pending.
Priority, Maneuvering Room, and Costs
A provisional patent application doesn’t inherently cut costs, and viewing it as “the cheaper option” is a bad tactical move for your IP portfolio. Rather, a provisional patent application lets you postpone some of the expenses of filing a full patent application while still preserving priority. This extra time can be invaluable for refining your commercial product, solidifying your eventual patent claim scope, and gauging the market’s appetite for your product.
Rather than making things “cheaper,” this time delay does slightly increase the overall cost of patenting the invention. If the time delay isn’t valuable, you’ll have a hard time justifying the overall increase in patent cost. That brings us to the fundamental tradeoff for filing a provisional patent application.
Trading Cost for Time and Room to Maneuver
The ability to trade cost for time and room to maneuver is ultimately what the decision to use a provisional patent application comes down to. The question can be put quite simply:
Is the additional time and room to maneuver valuable enough to you to increase your overall budget for getting a patent?
Some additional questions can help tease out the answer:
- Is your commercial plan locked in?
- Are you prepared to commit substantial resources to obtain a patent?
- Would a patent be valuable to your startup?
If the answers aren’t all “yes,” using a provisional patent application may just be the right decision to give you some more time, since it is designed to bookmark your invention’s priority, give time to refine your product strategy, and determine the commercial value of pursuing a patent.
Final Thoughts on Whether to File a Provisional Patent Application
Provisional patent applications are not a “cheap patent application,” and it’s unwise to view them as such. They’re also not for every startup or every invention.
Like the decision of whether to get a patent in the first place, the decision of whether to start that process with a provisional patent application comes down to your IP strategy, which as I always say, has to fit into your business strategy.