Pros and Cons For Filing a US Provisional Patent Application
Pros for filing US provisional patent application:
- Low cost: Provisional patent applications are generally less expensive to prepare and file than non-provisional patent applications.
- Quicker filing: If time is a factor to file a patent application, Provisional patent applications can be filed faster than non-provisional patent applications, as they require less information and have fewer formal requirements.
- Establishing an early effective filing date: A provisional patent application can establish an early effective filing date for the invention, which can be important in certain situations where there is a need for a public disclosure of the invention and some form of patent protection is required before making the public disclosure happens.
- Invention development/commercialization: A provisional patent application can be used to secure a filing date for an invention and then allow you to go to the commercial market with the invention to test this market and/or further develop the invention during a limited one year window before a non-provisional patent application must be filed.
Cons for filing US provisional patent application:
- Limited protection: A provisional patent application only provides an earlier priority filing date for the subject matter described and/or claimed in the provisional application for the invention. It will not mature into an issued patent and expires one year after filing.
- Lack of enforceable patent rights: The provisional patent application does not give the applicant/inventor an enforceable patent right to the invention nor does it give an effective filing date for any new information/subject matter added to the description of the non-provisional patent application.
- A non-provisional patent application is still required: A non-provisional patent application must be filed within one year of the provisional patent application filing date to continue the patenting process for the invention described and/or claimed in the provisional application. Further, any country specific foreign patent application, or a PCT international application, must be filed within one year of the provisional filing date to claim priority to the filing date of the provisional application.
In conclusion, filing a US provisional patent application can be a useful strategy for initially protecting an invention, but it also has its limitations. It is a cost-effective and efficient option to relatively quickly establish a filing date and to thereafter further develop and/or test market the invention. However, it requires the filing of a non-provisional patent application within one year of its filing to continue the patent protecting process. Ultimately, it is up to the individual or company to weigh the pros and cons before deciding whether to file a US provisional patent application.
The foregoing is provided for information purposes only and is not intended to be used as patent legal advice.