Provisional Patent Application (PPA) [The Insanely Complete Guide]

By Steve Aycock, JD and B.S.Cp.E.

Registered Patent Attorney and Computer Engineer


Overview

This article contains everything you need to know about Provisional Patent Applications. It is divided into three main parts: Part I – Information , Part II – Preparing and Filing a Provisional, and Part III – Post Filing Steps. The table of contents below shows you what is in each part.

Table of Contents

Information

What is a Provisional Patent Application?

What kind of inventions can you protect with a provisional application?

Can a Provisional Patent Cover More Than One Invention?

Provisional vs. Non-provisional Patent

When can you not use a provisional application?

Should I file a Provisional Patent?

How do I get a Provisional Patent?

How long does a Provisional Patent Take?

Can a Provisional Patent be sold?

Can a Provisional Patent be Licensed?

Is there a free provisional patent application?

Preparing and Filing the Provisional Application

Parts of a Provisional Patent Application

Provisional Patent Example

Provisional Patent Search

Provisional Patent Cost

Provisional Patent Application Fee

Reduce Your Filing Fee Costs with Micro Entity Certification

Provisional Patent Format

How to Write a Provisional Patent

Provisional Patent Application Template

Provisional Patent Drawing Requirements

How to Make Provisional Patent Drawings

Provisional Patent Drawing Template

Free Tools for Provisional Patent Drawings

Provisional Patent Application Forms

Provisional Patent Application Checklist

Creating an Account with the U.S. Patent and Trademark Office (USPTO) (optional)

Filing a Provisional Patent Application Online at the USPTO via EFS Web

Save your Electronic Acknowledgement Receipt

Organizing and Saving your Provisional Filing Documents

Post Filing

What to do After You File a Provisional Patent Application

Provisional Patent Expiration

Mark your calendar for your non-provisional conversion deadline and a few reminders

Converting a Provisional to a Non-Provisional

Converting a Provisional to a PCT application

Using a Provisional as a Priority Application for a Foreign Application

Refiling a Provisional Patent

Dropping a Provisional Patent

What to do if you miss your one-year non-provisional patent deadline?

Section I – Basic Information about Provisional Applications

What is a Provisional Patent Application?

A provisional patent application is a placeholder patent application that establishes a filing date for the invention (or inventions) disclosed in the application. Establishing a filing date for an invention as soon as possible is important in our current First Inventor to File system that was established when the America Invents Act (or AIA) was signed into law in 2013.

Provisional applications are one kind of utility patent application. The other kind is the non-provisional application.

Provisional patent applications do not go through the examining and approval process at the U.S. Patent and Trademark Office (or USPTO). Also, provisional patent applications do not issue as patents. Only non-provisional patent applications can issue as patents.

          Once filed, provisional patent applications are pending (or active) for one year. By the end of that year, if you want to continue the patent process, a non-provisional application must be filed that claims priority to the provisional application. By claiming priority to the provisional application, the non-provisional application gets the benefit of the filing date of the provisional application and it is as if the non-provisional application were filed on the provisional filing date.

          There is a procedure within the USPTO to convert a provisional application to a non-provisional application. However, that procedure is rarely used. Instead, a separate non-provisional application is filed that references the provisional application and claims as a priority date, the filing date of the provisional application. In this guide, when I refer to converting a provisional by the one-year date, I am referring to filing a non-provisional application and not the rarely used literal provisional conversion process.

          Also, just a quick note for clarity, because a provisional patent application does not issue as a patent, there is technically no provisional patent. However, many people commonly refer to a provisional patent application as a provisional patent. In this guide, I use both so to be inclusive. So, the terms “provisional,” “provisional patent application,” “provisional patent,” and “provisional utility patent application” all refer to the same type of application. I use the different phrase because all four of those phrases are commonly used and I want to reach as many people as possible with this guide and have it be understood regardless of the terminology used.

         

What kind of inventions can you protect with a provisional application?

Provisional patent applications, being one kind of utility patent application as mentioned above, can be used to protect any category of invention that utility patents apply to.

In the words of the patent laws, utility patents are used to protect three broad categories of inventions: 1) articles of manufacture, 2) processes or methods, and 3) compositions of matter. These legal phrases are kind of clunky and do not convey in a modern sense what the categories really are.

In plain English, these categories refer to 1) physical product inventions (toys, tools, sporting goods, home products, pet products, etc.), 2) inventions that include processes or methods of making something (processes also cover software that causes a computer to perform a series of steps), and 3) chemicals, pharmaceuticals, etc.

Basically, provisional utility patent applications can be used to protect almost any type of invention and the structure and/or functions of the invention.

Can a Provisional Patent Cover More Than One Invention?

          Yes! You can absolutely put more than one invention in a provisional application. This may increase your legal fees if you are using a patent attorney, but it will keep the filing fee the same and same on the administrative burden of tracking patent applications. If you are preparing and filing your own application, there is no extra cost except your time. The filing fee will be the same with one caveat: if your provisional application goes over 100 pages there will be a fee for each additional 50 pages. The filing fees are discussed in greater detail below.

Provisional vs. Non-provisional Patent

          As mentioned above, provisional patent applications are placeholder applications that don’t go through the examination process at the USPTO. On the other hand, non-provisional applications do get examined by an examiner who is a specialist in the technology area of the invention. The patent examiner will review the application and make a decision to reject or allow the application to issue as a patent.

          So, the primary difference between provisional and non-provisional is that the non-provisional application gets examined and can issue as a patent.

Another important difference is that provisional applications do not have the same formatting requirements and limitations as non-provisional applications, which gives you greater flexibility in terms of content in the provisional application.

When can you not use a provisional application?

          Provisional patent applications, because they are a kind of utility application, cannot be used as a priority application for design patent applications, which cover the ornamental appearance of an object. So, if your invention includes an appearance aspect, then you may want to consider a design application in addition to a provisional application. This way, you can protect both the appearance of your invention (with the design application) and the structure and function of your invention (with the provisional application).

Should I file a Provisional Patent?

          So, first I’ll give you the universal answer that one of my first-year law school professors taught us…the answer to every legal question is: maybe. 😊

Seriously, though, it is good to ask whether a provisional is the right type of application for your situation. Here is some information to help you decide:

Given the above explanation about the differences between the provisional and non-provisional applications and what the provisional cannot be used for, you might be wondering why one would file a provisional application. Well, there are several reasons that a provisional may be a good option for your invention:

  • Provisional applications have less formatting requirements (as in none) – this lets a provisional application be prepared and filed without having formal drawings completed and without worrying about your Microsoft Word skills. This can help you get the provisional application on file without waiting for drawings to be completed and formatting to be perfect.
  • Provisional applications are cheaper initially to file – this can help free up money to be used for things such as prototyping, marketing, etc.
  • Provisional applications can be expanded with new or different material when converted to a non-provisional application – this means that a provisional application can be filed when your invention is pretty complete but there may still be some features that you are working on or perfecting.

How do I get a Provisional Patent?

          To get a provisional patent, you need to do two things: 1) prepare a provisional patent application and 2) file your application with the U.S. Patent and Trademark Office (or USPTO). This filing will get you patent pending status on your invention and start the clock on the one-year time period that the provisional is active.

          The preparing and filing can be done by a registered patent attorney or agent, or you can go the do-it-yourself route. At the bottom of this guide, I have information for you on both options.

How long does a Provisional Patent Take?

          There are two time periods involved with a provisional application: first, there is the time that it takes to prepare and file the application, and second, there is the one-year period in which the provisional application is pending in the patent office.

          Regarding the time it takes to prepare and file the provisional, it can vary widely from one day to several weeks or months. It really just depends on the complexity of the invention and the number of iterations of revisions and comments on a draft application. In my practice, to give you an example, it generally takes from one to six weeks to prepare a provisional application and have it reviewed and approved for filing. That said, I have done a provisional in one day before for situations where a public disclosure was imminent (e.g., the next day).

Can a Provisional Patent be sold?

          Yes, a provisional patent application can be sold and transferred to a buyer.

          In my practice, I have seen this happen. In one case, I prepared a provisional patent application in one afternoon after getting an urgent call from an inventor. I met with the inventor in a parking lot and took pictures of his prototype. I used the photos for the provisional application (read more below about diagrams or drawings for provisionals, which can include photos). The next day the client had a meeting with prospective buyers. The prospective buyers purchased his provisional application on the spot at the meeting for a mid-six figure sum.

I share this story because I felt so happy for the client and I was honored that we were able to move quickly to protect his invention ahead of his important meeting. Provisional patent applications played a key role in this protection. This story does not reflect the typical scenario – every case and situation is different, but it was a successful outcome for the client and that is what I love to see.

Can a Provisional Patent be Licensed?

          Yes, a provisional patent application can be licensed. In fact, because of the time frame for getting patent applications through the examination process at the USPTO, it is not uncommon to license a pending application (provisional or non-provisional).

Is there a free provisional patent application?

          Yes and no. As you read about the parts of a provisional application below, you’ll see that the USPTO requires a filing fee for the provisional. However, this fee can be filed at a later date after the provisional application is filed. So, you can prepare and file a provisional application for no cost (or free). If the filing fee isn’t paid at the time the application is filed, there is an additional charge to pay when the fee is paid. In order for the provisional application to stay in effect, the filing fee and surcharge must be paid within a few months.

          This is why I say yes and no about whether you can file a “free” provisional patent application. I say yes because you technically can get a provisional on file and get patent pending status without spending one dime. I say no because at some point the fee plus a surcharge for late filing of the fee will need to be paid.  

Section II - Preparing and Filing a Provisional Application

Parts of  Provisional Patent Application

          The USPTO does not set specific content or parts requirements for provisional patent applications. In general, I think most provisional patent applications should have several parts:

  • Drawings (or photos, sketches, etc.) showing the invention;
  • A written description of the drawings called a “specification” or simply “spec” in patent lingo; and
  • A USPTO form identifying the inventor(s). I like to use a form called an Application Data Sheet, but there is also a Provisional Patent Coversheet that can be used as well. I give links to both of these documents below in the section on Provisional Patent Application Forms.
  • Official filing fee
  • And that’s it.

Provisional Patent Example

          In order to understand what goes into a provisional patent application, I think it helps to see an example. Below I have a few links to some example provisional applications. Take a minute to review an example or two so that you can become familiar with what a provisional application contains.

Provisional Patent Search

          Provisional patent applications are not published while they are pending during that one-year period and they are not technically published by themselves later. However, if a non-provisional application that claims priority to a provisional is published, the provisional is publicly accessible if you know where and how to look.

          Here’s my trick for searching for provisional patent applications:

  • First, start with Google Patents (). Google has a copy of the USPTO public database and the interface is super easy to use (unlike the patent office search tool).
  • In the google patents search bar, enter the following:
  • [your search term] provisional
  • For example, let’s say I am searching for a string bender provisional by an inventor named Waylon Baker (my good friend), I would enter “string bender Waylon Baker provisional.” Of course, for your search you would enter some keywords about the invention type you are looking for, an inventor name if you know it, etc. I recommend practicing with my example search here just so you get a feel for the steps.
  • I get one result because this is a pretty narrow search:
  • [Google Patent Search image 1]
  • Now, clicking on the String Bender title in blue, we get to the published application, and if you scroll down past the abstract, images, and classification, you will get to the description that has what we are looking for:
  • You’ll notice at the very beginning of the description is a paragraph that lists the provisional application that the non-provisional claims priority to. Now, make a note of the provisional application number (in this case it is 61/586,667).
  • Now, we are going to head over to the USPTO Public PAIR system. It is not as easy to use as Google Patents, but for provisionals it has what we need. PAIR stands for Patent Application Information Retrieval system.
  • Go to: Public Pair - Public Pair (uspto.gov)
  • Then, make sure the Application Number radio button option is selected. Then enter the provisional application number that we jotted down in step 2 (it is 61/586,667 for this example) and press the Search button. Sometimes, the system will tell you an application isn’t available or there is a high volume of users. If this happens, just re-enter the provisional application number and hit search again until you get a result that looks like this:
  • [USPTO Public Pair Image]
  • Next, select the Image File Wrapper tab from among the blue tabs. It is two over from the white Application Data tab. You should see something like this:
  • Now, look down the list of available documents and click on the small checkbox to the far right for the following documents: Specification, Claims (may not always be there), Drawings, and abstract (optional). Then, click the blue PDF button on the right at the top of the column of little white check boxes. I’ve added red arrows to indicate the checkboxes and PDF button.
  • Once the file downloads, you have a pdf of the provisional application.

So, just to recap, you use Google Patents to find a published non-provisional that claims priority to a provisional, then you use the provisional application number to look up the provisional in the USPTO PAIR System.

Provisional Patent Cost

          There are two costs associated with a provisional patent application: 1) professional fees for a patent attorney or agent, and 2) the official filing fees.

          Professional fees can vary a lot and typically depend on several factors such as the complexity of the invention, the size and location of the law firm, etc. My typical professional fees for provisional applications range from $2,500 to $3,500, but vary based on complexity of the invention, etc.

          As of this writing (January 14, 2022), the official filing fees for a provisional application are $150 for a small entity and $75 for a micro entity.

          There is possibly another fee for provisionals although I have not seen it very often. There is an excess page count fee. If your provisional application goes over 100 pages there will be a fee for each additional 50 pages. As of this writing the fee per additional 50 pages (or portion thereof) is $210 for small entity and $105 for micro entity.

          When it comes to fees, just be aware that the Patent Office adjusts the fees about every year. You can find the current fee schedule here:

          https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

          As you go through the electronic filing process, the USPTO Electronic Filing System will always have the current fees listed.

          So, the total cost for preparing and filing a provisional application in my practice can range from about $2,575 to $3,650 depending on the complexity and the applicable fee schedule.

Sometimes, inventors want to save money on the professional fees and prepare a provisional themselves, in that case the cost would be the inventor’s time plus either a $75 or $150 filing fee. I have some information at the bottom of this article about both options – the attorney assisted approach and the do-it-yourself approach.

Provisional Patent Application Fee

          As mentioned above, the fee for a provisional patent application has two parts in some cases: legal fees and official filing fees.

          The legal fees can vary a lot and typically depend on several factors such as the complexity of the invention, the size and location of the law firm, etc. My typical legal fees for provisional applications range from $4,200 and up, but vary based on complexity of the invention, etc.

          As of this writing (January 14, 2022), the official filing fees for a provisional application are $150 for a small entity and $75 for a micro entity.

          So, the total cost for my firm to prepare and file a provisional patent application can range from about $4,275 to $4,350 depending on the complexity and the applicable fee schedule.

Sometimes, inventors want to save money on the professional fees and prepare a provisional themselves, in that case the cost would be the inventor’s time plus either a $75 or $150 filing fee. I have some information at the bottom of this article about both options – the attorney assisted approach and the do-it-yourself approach.

Reduce Your Filing Fee Costs with Micro Entity Certification

          Regarding the official filing fees mentioned above, there is a small entity fee and a micro entity fee. You can reduce the filing fee by filing a micro entity certification (Gross Income Basis) with your provisional application if you meet the criteria for micro entity status.

          The Patent Office has a web page about qualifying for micro entity status. It is here:

          https://www.uspto.gov/patents/laws/micro-entity-status

          In a nutshell, you can qualify for micro entity status if you report an adjusted gross income (or equivalent for other countries) of less than a certain amount (about $202,000 as of this writing date) and have been named on four or fewer non-provisional patent applications.

Provisional Patent Format

          The USPTO does not specify the format of a provisional patent application, which is the good news and the bad news.

          It is good news because this makes provisional applications a very flexible vehicle for putting an invention disclosure on file with the Patent Office and establishing a filing date.

          It is the bad news because the absence of format rules provides little guidance as to what to include and how to organize the application.

          To keep it simple, I recommend formatting a provisional application basically like a non-provisional application and including the same sections in the same format as a non-provisional. Why? Because it gives me a framework for the application and it already lines me up for the non-provisional filing.

          I format provisional applications using Microsoft Word with sections and paragraph numbers like I do with my non-provisional applications.

          Here is a list of the sections I typically include:

  • Title
  • Field
  • Background
  • Summary
  • Brief Description of the Drawings
  • Detailed Description of the Drawings
  • Claims
  • Abstract

I’ll give an overview of each of these application sections in the discussion below on writing a provisional application.

         

How to Write a Provisional Patent

          First and foremost, a provisional patent application has one purpose: to provide a description of how to make and use the invention that would be understood by a person of ordinary skill in the technology area of the invention. A provisional patent application is not a sales or marketing tool and you don’t have to convince anyone that your idea is “good” with your provisional application. A provisional does not have to be great literature – it doesn’t matter if it is not as polished as a novel.

          A provisional patent application has one purpose: to provide a description of how to make and use the invention that would be understood by a person of ordinary skill in the technology area of the invention.

          Read that sentence again and really let it sink in. Make and use. That’s it. No selling, no convincing anyone it is a great idea, no slamming previous solutions, etc.

          Focus all of your energy and concentration on that one goal – clearly describing how to make and use the invention with an emphasis on the “secret sauce” aspects.

          I usually take things in this order:

  • Identify the problem the invention solves and how it solves that problem and the benefits it provides.
  • Map the solution and/or benefits of the invention to structural features of the invention that make the solution or benefits possible. In other words, what structural or operational features of the invention permit it to provide the benefits or solution.
  • Prepare drawings that show the structural or operation features. These can be as simple as photos of hand sketches or pictures of a prototype (not required, but can be used as drawings), or as sophisticated as CAD drawings. Because there are no format requirements for provisional applications, you have a lot of flexibility when it comes to the drawings.
  • Write a description of the drawings.
  • Once the description is done, circle back and double check that you have shown and described the key features of the invention – what I call the “secret sauce.” Also, read the application from the viewpoint of a person in the technology area that has not seen your invention before. Ask yourself do you think it gives them what they need to make and use the invention?

If you have a patent attorney prepare the application for you, you may still want to do the above analysis for your own information and to help guide your attorney.

If you are wanting to try your hand at preparing your own provisional application, I have a course that will give you the step-by-step to do it yourself.

Provisional Patent Application Template

          Below is a link to download a provisional patent template in Word format. It can also be used in Google Docs if you don’t have Word available. This gives you the basic setup of a provisional. You can open the template and start adding your own content.

Provisional Patent Drawing Requirements

          There aren’t any special requirements for provisional drawings. That being said, you do need to make sure they are clear, legible and convey as much details as necessary to make and use your invention.

If you have drawing skills, then I think it is a good idea to go ahead and prepare drawings that would work for a non-provisional application.

You can use whatever format works best for you, just be sure to make 

How to Make Provisional Patent Drawings

          Because there are no formatting requirements for provisional patent application, you have a lot of flexibility in how your make your “drawings.” I use quotes here around drawings because provisional patent applications can contain drawings, photos, sketches, etc. The main thing to remember for the drawings is that they should show the key mechanical or structural features or process steps if the invention is a method. Also, the drawings should support the description of how to make and use the invention.

You wouldn’t build a house without a plan, right? Well, you can think of your drawings as the plan for your invention and also a guide of how to use, with the specification of the application being the instructions.

There are a number of ways to make provisional drawings. I will list them in my order of cheapest/easiest to more costly/less easy:

  • Make a hand sketch and take a picture of it. Paste the picture into a word doc or google doc and make a pdf of the document.
  • Take a picture of a prototype and paste the picture into a word doc or google doc and make a pdf of it.
  • Use a free drawing tool such as the one Google provides with the google docs products.
  • Use the drawing features of Word
  • Use a specialized drawings program such as a CAD program or a program such as Visio for flowcharts

Provisional Patent Drawing Template

          Here is a template for provisional drawings showing some basic ideas to get you started. This is in the Google Drawing format:

         

Free Tools for Provisional Patent Drawings

          In my practice, I mostly use Visio, which is a great tool that I have used for many years. However, it is not cheap.

          If I were going to work on a provisional or even to prepare a disclosure document to give to a patent attorney, I would use an inexpensive drawing tool – preferably something I already have or something free. There are a lot of great tools you can use for provisional drawings without spending any money.

  • Drawing by hand and taking a picture – yes, this is totally acceptable for a provisional application. You can make a hand sketch and take a picture of it with your phone and then include that picture in your provisional application or disclosure document for a patent attorney. Of course, you want to make sure your drawing is reasonably clear and conveys the invention. You don’t have to be an artist and your drawings aren’t going to be evaluated on their artistic value just their information value.
  • Microsoft Word – Word is a super powerful program that includes drawing and image features. Many computers come with word installed already and you can use that to create your drawings.
  • Google Drawings is a free tool included as part of the Google Docs suite of tools. This is a great program and I know patent attorneys who use Google Drawings.
  • Look for other free tools that will let you take an image and annotate it such as Evernote or other similar note taking apps.

Provisional Patent Application Forms

          For filing a provisional patent application you really on need one required form and one optional form. The required form is a coversheet or Application Data Sheet. The optional form is the Micro Entity Certification form if you qualify for the micro entity fee schedule.

          I use the Application Data Sheet (or ADS) form for my provisionals because it lets me already have the form for use in a non-provisional filing. However, the ADS form is sometimes a pain and doesn’t always cooperate with everyone’s PDF reader or editor.

There is a Provisional Coversheet Form that is simpler to use and serves the purpose for a provisional application. You may want to go the coversheet route for simplicity.

Here are links to the ADS form and the Coversheet form at the USPTO:

Provisional Patent Application Checklist

          When reviewing a provisional patent application or preparing your own application for filing, it helps to have a checklist.

          Here is a list of items to check:

          Here is a link to the checklist in PDF format so you can print it out and make notes on it.

Creating an Account with the U.S. Patent and Trademark Office (USPTO) (optional)

          You can prepare and file a provisional application initially without creating a secure login account at the Patent Office. There is an option called unregistered efiler and you can use that to file a provisional quickly without waiting for the account verification process.

          If you have some time to wait for the account verification process or if you have already filed your provisional application, I think it Some implementations can include a good idea to setup your account, get a customer number for the Patent Office system and verify your identity to get a secure login account.

          With the secured login account you will access the USPTO system as a registered user and you will have full visibility into your provisional patent application case even though provisionals are not public. As a registered user you can access your unpublished and private information about your application.

          Here is a link to the page one the USPTO website that guides your through the account setup process:

          https://www.uspto.gov/patents/apply/applying-online/getting-started-new-users

Filing a Provisional Patent Application Online at the USPTO via EFS Web

Save your Electronic Acknowledgement Receipt

Organizing and Saving your Provisional Filing Documents

On your computer or (preferably) in cloud storage, create a folder for your provisional patent filing documents. In this folder place the following:

  • The specification
  • The Drawings
  • The ADS or Coversheet
  • Your micro entity certification (if you used one)
  • The electronic acknowledgement receipt that you saved after you filed your application (you did save it didn’t you? – see the section above about saving your filing receipt).
  • Another other notes, sketches, drawings, etc. that may be relevant to your invention or provisional patent application.

Section III - Post Filing

What to do After You File a Provisional Patent Application

          First of all, once you file your provisional either through a patent attorney or on your own you should congratulate yourself. Your invention is patent pending and you are moving forward with monetizing your idea. That is an excellent accomplishment.

          After celebrating your provisional application filing, you need to prepare for the nest 12 months. There are some things you will want to make sure of and there are some things that are optional depending on your plans for monetizing your invention.

          Here are a few things to think about after you file your provisional patent:

  • Add reminders to your calendar about the one-year date and some reminders along the way (see section about marking your calendar below for more details).
  • Consider your options for making a prototype – I will be publishing an insanely complete guide about prototyping soon. Be sure to subscribe to my email newsletter to make sure you get notified about my new articles. You can subscribe here: __________. If you would like to get a quote on a prototype, please reach out to me (steve@cygnetiplaw.com) and I will put you in touch with a friend that does great protype work.
  • Reach out to potential licensees or prospects that may want to license or buy your invention.
  • Work on a virtual prototype, sell sheet or other marketing materials
  • Take an online course for inventors to learn how to market your invention. There are several good courses out there. Here are a few teachers that I recommend based on my experience (I have no financial connection to these teachers and courses and do not receive anything for the recommendation):
  • Alan Bekley
  • Stephen Key

Provisional Patent Expiration

          As I’ve mentioned above, provisional patents expire one year from their filing date. This means that if you want to continue the patent process of your provisional application, you need to file a non-provisional application by one year from the filing date of the provisional. For example, if you filed your provisional on May 1, 2021 you would need to convert the provisional by filing a non-provisional application by May 1, 2022. You don’t want to wait until the last day though to file your non-provisional. You will want to give yourself some time. I’d recommend filing at least a week prior to the deadline.

Mark your calendar for your non-provisional conversion deadline and a few reminders

          Once you file your provisional application (or your patent attorney files it), you’ll want to mark your calendar with a few reminders. I recommend marking your calendar with a reminder at 6 months after filing, 9 months after filing, 11 months after filing, one week before the one-year date, the day before the one-year date, and the one-year date itself. This will give multiple reminders as you approach your one-year date.

Converting a Provisional to a Non-Provisional

          This is the most common next step in my experience. In this conversion, a regular U.S. non-provisional application is filed that claims the benefit of the provisional application and the filing date of the provisional application.

          When preparing the non-provisional application, any new features or modification of features that have been thought of during the one year period can be included in the non-provisional. This is one of the features that makes the provisional – non-provisional combination a good choice for a lot of inventors and situations.

          The non-provisional application gets placed in line to be examined by a patent examiner and can issue as a patent.

Converting a Provisional to a PCT application

          Another common approach is to file a PCT application after a provisional application. The PCT application is somewhat like a provisional application, but for other countries. The PCT application is essentially an international placeholder application that must be converted (so to speak) into an application filed in each country you wish to seek protection in. The application filed in each country is called a national stage application of the PCT application. One difference between a provisional and a PCT application is that the PCT application does get an international search performed and a written opinion on patentability.

Using a Provisional as a Priority Application for a Foreign Application

          You can file a foreign application using your provisional as a priority application. To go this way, you will need to enlist the help of a patent attorney in the country (or countries) you would like to file in.

          A word of caution though: foreign filing can get really expensive especially in countries where translation is required. Also, in may jurisdictions outside the U.S. there are annuity fees due each year a patent application is pending. Finally, the process in many foreign countries makes the process in the U.S. look fast, so be prepared to wait.

What to do if you miss your one-year non-provisional patent deadline?

          If you miss the one-year provisional deadline, you have four options:

  • Refile the provisional
  • File a non-provisional
  • Do nothing (not recommended)
  • Petition for acceptance of a late non-provisional

You may just want to refile your provisional or go ahead and file a non-provisional. Either way, you will lose your original filing date. If budget is a concern, then refile your provisional. If getting a patent sooner rather than later is more important, then you may want to consider filing a non-provisional.

If you unintentionally miss your one-year deadline to convert your provisional and you are within two months, there is a very limited way to recover the situation. You can file a non-provisional up to two months after the one year date and submit a petition to accept late filing of the non-provisional application.

          You do not want to use this option though because it is expensive.

          Here is a link to the form and an article about the two-month grace period:

         

Need help with a provisional?

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