A “provisional” U.S. patent application is an application that can be filed with the U.S. Patent Office to secure a filing date for an invention. Since most countries have a first-to-file system as opposed to a first-to-invent system, it is important to be the first person to secure a patent application filing date for an invention before someone else with a similar invention files a patent application. A provisional application is less expensive to file and less onerous to prepare than a regular patent application, so it can be used to secure a filing date more quickly.

A provisional application expires one year after it is filed and never becomes a patent, but it can be converted into a regular U.S. patent application before it expires. The main benefit of filing a provisional application is that it gives up to one additional year to perfect an invention, and in doing so, effectively provides an additional year of patent protection.

That additional year can be used to: test the market, further develop the invention, attract investors, or secure financing. As such, provisional applications can be used as a tool for delaying the expenses associated with regular patent applications or for obtaining more time to decide whether it is worthwhile to pursue a patent for a particular invention. While doing so, the applicant can use the patent pending phrase in association with the subject matter of the invention.

Further, provisional applications are held confidential (not made publicly available) and are not examined by the U.S. Patent Office unless converted into a regular U.S. patent application within one year. New subject matter may be added to the regular patent application, but the new matter will not receive the earlier priority filing date of the provisional application. If additional subject-matter will be added to the subject matter of a provisional application, the regular patent application should be filed as soon as the additional subject matter is available, rather than waiting until the one-year deadline. If no new subject matter is added, the costs are greater than just filing a regular application in the first instance.

If you choose to proceed with a provisional patent application, it is important to keep in mind that the level of protection ultimately afforded by a patent is only as good as the level of detail contained in the application. 

This article is provided for informational purposes only and is not legal advice. For further information or assistance in obtaining a patent, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.