Whether you should file a provisional patent application or a non-provisional patent application depends on a number of factors. One can think of a provisional patent application as both a “short-form” patent application and as a “placeholder” application. A provisional patent application is shorter and “less involved” than a full (non-provisional) patent application and is “good” for a year. At or before the one-year mark, a provisional application must be converted to a full patent application or it will be deemed expired/abandoned. Note that provisional patent applications are only available for utility and plant patents. Because of these features, a provisional application has various advantages and should be filed under several circumstances, including these:

• When a patent application must be filed immediately — being a “short-form” application, a provisional patent application can be filed much more quickly than a full patent application
• When current cash-flow is short or the costs of a full patent application are not yet justified — the Patent Office filing fees for a provisional application are a fraction of the fees for a full patent application; further, attorneys fees and other preparation expenses are less because a provisional patent application is shorter and less involved
• If public disclosures are needed before a full patent application can be prepared — publicly disclosing the details of a new invention before filing a patent application generally prevents a patent from being issued; thus, filing a provisional patent application before disclosure preserves the inventor’s ability to eventually obtain a patent
• When more time is desired for patent processing and examination — there are strategic business reasons that some inventors may have for wanting to expand the amount of time taken for the processing and examination of a patent application; filing a provisional patent application (and then converting it to a full patent application) will add a year to the processing and examination period

Let’s look at a hypothetical: Suppose you are a small-time inventor and you have invented a new medical device. You are seeking investors, you are still researching whether there is sufficient market demand for your new device and, at the moment, you do not have sufficient resources to file a full patent application. Furthermore, you have a competitor “hot on your tracks.” You are thinking of attending an upcoming trade show where you could show your new invention in the hopes of finding investors.

In this hypothetical, our inventor has several problems that are “solved” by filing a provisional patent application. Filing a provisional patent application quickly will make our hypothetical inventor the first-inventor-to-file (which is essential in the US patent system). In this way, our inventor will “defeat” the rival inventor for patent rights. Further, the provisional patent application will be affordable but also preserve our inventor’s ability to obtain the patent. Once filed, our inventor can make public disclosures without endangering the ability to obtain the patent if the costs are justified. Now, our inventor can disclose the invention to potential investors at the trade show and can determine if the market demand is sufficient to warrant the expense of filing a full patent application.

Contact Revision Legal For more information or if you have an invention that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

The Legal Mechanics of Provisional Patent Applications

A provisional patent application (PPA) is governed by 35 U.S.C. § 111(b). Under the America Invents Act’s first-inventor-to-file system, securing an early priority date is legally significant. Filing a provisional application establishes a priority date that can be claimed in any non-provisional application filed within 12 months under 35 U.S.C. § 119(e). The provisional itself is never examined and can never mature into a patent. Its sole legal function is to establish that priority date.

If a non-provisional application is not filed within 12 months, the provisional goes abandoned and the priority date is lost—permanently. There is no extension. Inventors who let the 12-month deadline lapse must file a new non-provisional without the benefit of the earlier priority date, which can be catastrophic if any public disclosure occurred in the interim.

What the Provisional Must Actually Contain

A common and costly mistake is treating the provisional application as a rough draft. Under 35 U.S.C. § 112 and the Federal Circuit’s interpretation of § 119(e), you can claim the benefit of the provisional’s filing date only for subject matter that is fully disclosed in the provisional—not subject matter added later. If your non-provisional claims an aspect of the invention not described in the provisional, that aspect receives the non-provisional’s filing date, not the earlier date.

The provisional must satisfy the written description and enablement requirements of § 112: it must describe the invention in enough detail that a person having ordinary skill in the relevant field could make and use it without undue experimentation. Required elements under 37 C.F.R. § 1.51(c) include:

• A written description of the invention satisfying § 112 enablement and written description requirements.
• Any drawings necessary to understand the invention.
• The appropriate filing fee.
• A cover sheet identifying the application as a provisional patent application.

Comparing Costs and Strategic Tradeoffs

Filing fees for a provisional application are significantly lower than for a non-provisional. As of 2024, the small entity basic filing fee for a provisional is $320, compared to $820 for a non-provisional utility application. Attorney fees are also lower for a well-crafted provisional than for a complete non-provisional. However, a provisional that fails to fully disclose the invention provides false security and may forfeit the priority date on the claims that matter most.

The provisional strategy makes sense in several circumstances:

• Pre-disclosure protection — If you need to show the invention to investors or collaborators before a full application is ready, filing a provisional first preserves patentability even after the disclosure.
• Market testing — A provisional buys 12 months to evaluate whether commercial demand justifies the full cost of patent prosecution.
• PCT and international filings — A U.S. provisional can serve as the priority document for Patent Cooperation Treaty (PCT) international applications, provided the PCT filing is made within 12 months of the provisional.
• Ongoing R&D — If the invention is still being developed, a provisional locks in an early date while allowing refinements to be incorporated into the non-provisional.

Converting to a Non-Provisional: What to Expect

Conversion from provisional to non-provisional must occur within 12 months—no extension is available. The non-provisional may be filed either as a direct conversion claiming benefit under § 119(e) or as a continuation-in-part (CIP) if new subject matter is being added. Plan the non-provisional filing well in advance of the deadline. Claim drafting—the most legally consequential part of the application—requires adequate time. Claims define the scope of patent protection and are analyzed in both infringement and validity proceedings.

Contact Revision Legal

If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.