Small businesses are often dissuaded from patenting their creations because of the costs involved. Obtaining a US patent is an expensive undertaking that involves thousands of dollars in legal fees and filing costs, not to mention the time of the inventors. Many small businesses go without patent protection in order to forego these expenses. However, this puts them at a disadvantage in negotiations with prospective business partners, or when they later try to obtain a patent.
By filing a provisional patent application, a small business may delay the expense of a regular, non-provisional application for up to a year. During that period, the small business may mark his invention with “patent pending” and shop it around without fear of theft by prospective business partners. If it is commercially worthwhile to patent the invention, the small business may choose to file a non-provisional patent application within twelve months of filing the provisional application and claim the earlier filing date of the non-provisional patent application. This would help establish superior rights to a patent over a competitor who filed during that twelve-month period.
For example, pretend that Jon files a provisional patent application for an improved parachute on April 1, 2000. He shops it to the military. The SEALs express interest in buying that parachute, so Jon files a non-provisional patent application on March 31, 2001. He can claim priority to the April 1, 2000 filing date of the provisional patent application.
The provisional patent application is much cheaper to file for many reasons. The application does not require formal oaths or declarations. It need not include any claims, which are difficult to draft properly. Most importantly, there is no need to have an information disclosure statement discussing the state of the art, which requires a prior art search.
However, Jon cannot patent a glider and claim the earlier priority date of his parachute application. The idea behind the provisional patent application is that a small business has a year to decide whether or not to patent the invention, but it cannot use that time to come up with the invention. The provisional patent application must disclose sufficient material to meet the patentability requirements of any inventions claimed in a later non-provisional patent application. The provisional application must include the names of all the inventors, a written description of the invention, and any drawings necessary to understand the invention.
After the twelve-month period has expired, the inventor cannot claim the benefit of the earlier filing date in a non-provisional patent application. It is very important to note that if the invention is found to be “in use” or “on sale” within the United States during the twelve month period without the filing of a corresponding non-provisional patent in that time, the inventor may lose the right to ever patent the invention. Thus, if Jon starts selling parachutes on March 1, 2001, but never gets around to filing a non-provisional patent application, he may lose the right to ever patent his parachute.
A provisional patent application may be very useful to a small business that is shopping its inventions. However, care must be taken so that full patent rights may be obtained in the future.