Many companies, especially companies trying to save money, file provisional patent applications to protect inventions. Provisional patent applications differ from regular patents applications because they do not mature into an actual patent unless a patent application is filed within one year.
First, the U.S. Patent and Trademark Office (PTO) filing fee of a provisional application is relatively low: only $110 for a small entity (i.e. a company with less than 500 employees) or $220 for a large entity. The filing fees for a regular patent is between $400 and $2,000 (depending on the size of your company and claims made in your application).
Second, the requirements for a provisional application are much easier to meet than a regular patent application. In order to obtain a filing date, all that is needed in a provisional application is a coversheet, the PTO filing fee and specifications. Accordingly, preparation and filing of a provisional application is a simple and quick process for patent attorneys, which greatly reduces attorney’s fees.
Third, the filing of a provisional application affords patent protection effectively extending the 20 year patent term to 21 years.
Fourth, the filing of a provisional application can be used to satisfy the U.S. requirement that a patent application must be filed within one year of publication, first public use or offer for sale of an invention.
Fifth, the filing of a provisional application enables the applicant to claim patent pending status on its products.
Sixth, the timely filing of a provisional application preserves U.S. and foreign patent filing rights.
In order to retain the priority benefit of a provisional patent, a regular patent application (and any foreign applications) must be filed within one year of the provisional patent and must claim priority based on the provisional patent application. It is also important to keep in mind that a provisional patent is confidential and un-published by the PTO, which many companies like because of sensitive materials related to inventions, but if the applicant decides to file foreign patent applications, the provisional patent will be published 18 months from the filing date of the provisional application. Likewise, once an applicant secures a regular patent, the patent will be published.
In addition, filing a provisional application delays when examination will commence, effectively delaying when the patent will eventually issue. Some companies view this as a negative if their technology is quickly-changing, such as software, cell phones, etc. Quickly-issued patents are key to protect technology that is changing rapidly in the marketplace. Some companies actually prefer to have a patent pending as long as possible so that potential infringers will not immediately know how broad the issued patent will eventually be and so the potential infringers cannot actively design around a patent application because the patent claims have yet to issue.
Another filing consideration is litigation of provisional applications, as provisional applications are discoverable during a lawsuit. This makes provisional applications a potential litigation exposure because it is possible to attack an issued patent based on the differences in language between the provisional application and the full utility application. Many conclude that a regular application should have the exact same language as the provisional application and at that point it may be better to file the regular application rather than the provisional application.
In conclusion, the decision regarding filing a provisional application will be based on costs, timing and confidentiality of the invention. Additionally, a company should taken into account non-patent business factors that are normally associated with putting a new product on the market.