Provisional patent application in US : procedure, timeline and cost guideline

Provisional patent application in US a complete guideline on procedure, timeline and cost


So, You are thinking to go for filing a provisional patent application for your invention. It indeed is a low upfront cost option that  helps inventors giving time to test the true potential of the invention before actually going for full patent procedure (involves significant costs) . additionally your priority date is secured and the confidentiality issue is taken care.

You can read more at expert article on how provisional patent applications can help you save costs in initial phases

Filing provisional patent application is a way where you can postponed the entire patent procedure for 12 months at low initial cost and get time to test commercial worth of invention without compromising confidentiality or priority date (crucially important in patent world).

Here are some facts about provisional patent application that makes it cost effective starting point in protecting your invention:

  • Low cost starting point which protects priority date of your invention

  • It helps in postponing the efforts and costs for going for complete (non-provisional patent application)

  • Gives window period of 12 months to test the commercial worth of the invention and to decide whether to proceed with complete patent application

  • It also helps in securing priority date for patent applications to be filed outside US

Things to consider when going for Provisional Patent Application

Be careful when writing provisional application for your invention, writing provisional application as writing rough draft of your invention would be a costly Mistake you would like to avoid...

It is a scope defining document:

A provisional application is not a rough draft of your idea or invention, In fact it defines the scope of your invention !!!

So every part (element) of your invention which is outside the scope of the provisional application and you happened to develop in the 12 months time (that is at the time of filing complete patent application) will fail to have the earlier priority date (filing date of provisional application). Which means the part of invention you developed after filing provisional which is outside the scope which is set by provisional application will not have the advantage of priority date of provisional application.

Even if you file complete specification later it does not replace the provisional specification, it still remains in the record.

The patent office allocates the filing date and patent application number to the provisional application received. If the complete specification is not filed within 12 months from the filing date of provisional application, the patent application is treated as deemed to have been abandoned.

The applicant who has filed a provisional patent application must file a non-provisional patent application during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

The description of invention should not be limiting:

The language used in patent application plays an important role in defining its scope. While writing description for invention, you should avoid using limiting words like “must have” “consists” “essential”.  Instead try to describe elements of the invention with as broad scope as possible: You can use terms like a “writing device” instead of directly saying “a pen” which would be of limiting scope and can eliminate other writing devices like pencil from the scope.

Documents required for filing provisional application in US:

  • the application as a provisional application for patent;

  • the name(s) of all inventors;

  • inventor residence(s);

  • title of the invention;

  • name and registration number of attorney or agent and docket number (if applicable);

  • correspondence address; and

  • any U.S. Government agency that has a property interest in the application.

Things to know before going for provisional patent application in US:

  • Provisional patent applications once filed remains confidential with patent office they are not examined. Actually they only serve as a place holder for your complete (non provisional) patent application of the invention.

  • Provisional patent applications may not be applicable for design related inventions.

  • The provisional patent cannot have any benefits of earlier filed application.

  • The description in the provisional patent application must be as complete as possible as it will be defining scope of the invention.

  • Any part (element) in the non provisional patent application of your invention which is outside the scope of the provisional patent application and you happened to develop in the 12 months time (that is at the time of filing complete patent application) will fail to have the earlier priority date (filing date of provisional application).

  • To get such earlier priority date benefit of provisional patent application the “subject matter” of the invention filed in non provisional patent application should have support in provisional patent application.

  • The provisional patent application will not become a granted patent of the next steps in procedure for obtaining patent in United States is not followed by applicant; this is by no means a completion of their responsibility.

Provisional Patent application cost and procedure in US

The cost for filing a provisional patent application has 2 components:

Filing fees for provisional patent application : 

The filling fees is about $100 and $200 for small entities and large entities respectively.

Patent attorney costs for drafting and filing a provisional patent application: 

here the attorney charges varies to a large extent based on factors like

  1. Complexity of the invention

  2. Field of the invention

  3. Patent attorneys experience

Yet to give you an approximate idea, patent attorney charges for drafting and filing provisional patent application in US range from $1000 to $3500 based on factors mentioned above.

Procedure of filing provisional patent application: 

Step1 : Non disclosure agreement

Generally patent attorney firms do a non disclosure agreement with you (inventor) to ensure that the confidentiality of the invention disclosed would be maintained.

Step 2: sharing invention Disclosure 

In this step you share all the relevant information about the invention to the patent attorney, including as many drawings, flow charts photographs etc... anything and everything which helps in explaining your invention in better way to the patent attorney should be shared. Most often you will receive something called " Invention Disclosure Form " in which you suppose to write answers to questions to be able to come up with complete invention disclosure of your invention.

Step 3: Drafting provisional patent application

Here based on the information provided in the invention disclosure the patent attorney drafts (writes) provisional application for patent and gives it to you (inventor) for a review. Based on the review and ensuring the scope of the invention has be well covered in the draft the provisional patent application is filed in the USPTO and a receipt is generated.

Do I need to hire Patent attorney for provisional patent application in US?

It is possible to file a provisional patent application in USPTO without representation by a patent agent or attorney. However, if you choose to go ahead without patent attorneys help in the initial phase of provisional patent filing to cut (save) patent attorney fees, you might face some difficulties as below:

what you can miss if going without help of patent attorney for provisional application:

  • Most common is missing 12 months deadline for going for Non-provisional (complete) patent application.

  • Claims in the complete patent application are not supported by disclosure in the provisional patent application.

  • Disclosing too much information at a time, in many cases, more than one invention that are not related to primary invention

  • Sharing information publically that is not protected by provisional disclosure (like additions and improvements to the invention) without considering the scope of the provisional application

  • Treating (wrongfully) provisional patent application as simply a rough draft of the invention and not fully understanding importance of it. That is

  • failing to disclose the scope of invention

  • Sufficient disclosure of the invention to be able to be enabling

  • Failing to disclose Best mode of invention

The provisional patent application must disclose the invention to be protected in sufficient details so as to enable a person skilled in the art to practice the invention, also mentioning the best mode of operation, this is based as per US patent law, and section 112 where it is described that the provisional patent application is considered to be subject to same burden as a patent application.

If you thinking of filing a provisional patent application for your invention and have some questions or need help from a patent professional or patent attorney you can contact here.