Key Steps in Filing a Provisional Patent Application

Thoughts to Paper - September 13, 2023

Hey there, inventor! Are you on the brink of inventing the next big thing and want to protect it with a patent so nobody else can make your invention? A provisional patent application is a temporary patent application with the Patent Office. It’s a great starting tool for an inventor. We’re going to go over what you must know to file a successful provisional patent application.

How does a provisional patent application work?

Alright, let’s break it down without any boring legal jargon. A provisional patent application is like the warm-up before the big patent application marathon. It’s a way to get in line with the U.S. Patent Office and hold that place in line. We like to think of it as a “save the date” with the Patent Office.

You essentially tell the Patent Office, “I’ve invented something, and I want to eventually file a patent application and ask you for the right to stop anyone else from making my invention for 20 years. But I’m not quite ready yet. I need more time to raise money or finalize my invention. But I don’t want anyone else to get in front of me in line. So hold my place in line for 12 months and I’ll get back to you.”

Once you file the provisional patent application, the Patent Office holds your place in line for 12 months. But you must remember to get back to the Patent Office within 12 months and file a full nonprovisional patent application. Otherwise, you will lose your place in line with the Patent Office and someone else could get in front of you. Whoever is ahead in line is first eligible to get a patent for an invention so your position in line is important. Further, you only get to save a place in line if your provisional patent application is written and filed properly. Here are the important steps:

1. Write down exactly how your invention works

The most important thing to do when preparing a provisional patent application is to write down exactly how your invention works. How exact? The Patent Office says you need to have enough detail in your patent application to allow someone else to be able to fully understand and even recreate your invention!

There is a common misconception that a provisional patent application doesn’t need a lot of detail since it’s just a provisional and you can add in more detail later when you file the nonprovisional patent within 12 months. The problem with this is the Patent Office says you only protect what you write down. So, if you write a provisional patent application and it has just one sentence, “A car that travels through time”, do you think the Patent Office will give you even temporary 12-month protection for every possibility of making a time machine? The answer is clearly, no. You can only protect what you explain in detail.

Another example. Let’s say you invent a bread toaster that automatically stops toasting on its own once the bread is at a certain shade of brown. Can you simply file a provisional patent application with one sentence which says, “Bread toaster that stops toasting automatically once it sees the bread is brown”? No, such a simple patent application, even for a provisional patent application, will likely be considered inadequate by the patent office and it may be treated as if you never filed it. To file a proper patent application, you need to explain how the invention works in detail. How does the toaster know when to stop toasting the bread? Is there a camera inside that can measure the bread’s shade of brown? Is there a temperature sensor inside that can measure the surface temperature of the bread? Remember, you must explain exactly how your invention works for a patent application to be valid, even one that is provisional.

This step is so more important it is often a good idea to have someone else help you write down how your invention works. You know your invention, but someone else will not. If you get someone else to write down how your invention works, that someone else will ask you questions about anything he doesn’t understand, making sure that you’ve given enough detail for someone to fully understand the invention. That someone else could be a patent attorney or patent agent who is trained to write in the way the Patent Office wants.

2. Make drawings of your invention

Drawings help explain how an invention works. Creating drawings to add to your patent application will help ensure that your patent application has enough detail to protect the invention. If your invention is a product, draw out the parts of your invention. What pieces does it have and how is it put together? If your invention is an app, or some method of doing something, drawings will be flow diagrams, showing the steps of how the app or method works, from the first step to the last step.

3. File the patent application

The patent application consists of the written description and the drawings of your invention. These must be sent to the US Patent Office along with the provisional patent application paperwork. Make sure all your paperwork is complete and the correct amount of patent fees are paid. Any missing paperwork or fees may prevent the patent application from being accepted by the Patent Office. Fees change frequently and may vary depending on your income. It is recommended to have a patent attorney or patent agent submit the patent application to make sure it is accepted by the Patent Office. Even most large corporations hire patent attorneys and patent agents to file their patent applications to ensure that this important step is done properly as to not jeopardize the patent application.

4. Receive official filing receipt

Once a provisional patent application has been accepted by the US Patent Office, the Patent Office will send an official filing receipt. Save this to your records as confirmation that the Patent Office got your provisional patent application. Keep in mind, however, that this receipt just says your provisional patent application was received with all the proper paperwork, it does not say whether the content of the patent application is sufficient. This is because the Patent Office does not look at the content of a provisional patent application in detail when it is filed. They only look to make sure you have all the right paperwork filed, nothing more. The time the Patent Office will look at your provisional patent application in detail is later when you file a nonprovisional patent application which is linked to this provisional patent application. Then, at that time, the Patent Office could declare that your provisional patent application was written insufficiently and refuse to acknowledge its validity. If this happens, your provisional patent application will be treated as if it was never filed, and you may have lost your place in line at the Patent Office.

In short, you won’t know if your provisional patent application is valid until if and when you file a nonprovisional patent application. This is the reason why it is so important to have a provisional patent application properly written at the time you file it. By the time you later find out it isn’t properly written, it’s already too late.

5. Decide to file a nonprovisional patent application within 12 months

Your provisional patent application will last 12 months from the date it was filed. That means before the 12 months are up, if you want to continue to save your place in line with the Patent Office, you must file a nonprovisional patent application. If you do not do so, the provisional patent application will expire and disappear, almost as if you never filed it. Do not wait until the last minute before the provisional patent application expires to hire a patent attorney or patent agent to write your nonprovisional patent application, they won’t have enough time. You should hire a patent attorney or patent agent at least two months prior to when your provisional patent application will expire, so they have ample time to prepare the nonprovisional patent application.