What is a Provisional Application for Patent (or “Provisional Patent Application”)?
Provisional patent applications are most frequently utilized by Applicants who want to want to defer patent preparation/patent prosecution costs (for a maximum of a year from the provisional application for patent filing date) while exploring the commercial potential for an invention.
Once a provisional patent application is filed, an Applicant can offer for sale/disclose/publicly use their invention with minimized fear that their invention will be misappropriated. However, even if a provisional patent application is filed, an Applicant may still want to utilize a Non-Disclosure Agreeement (NDA) prior to disclosing to another party (assuming the other party would agree to signing the NDA) for a variety of reasons.
As most countries outside of the United States implement an “absolute novelty” patentability requirement (versus the United States which provides a “grace period” for filing a patent application upon an offer for sale/disclosure/public use/etc.), a public disclosure prior to filing a patent application may be fatal to patenting internationally. To avoid such an adverse scenario, the Applicant may maintain their ability to file in international jurisdictions by filing a provisional application for patent prior to making a public disclosure.
Although provisional patent applications do serve a number of business interests, a number of items must be considered prior to utilizing such a filing to avoid a loss of legal rights. It must be stressed that a provisional patent application does not provide any legal protection unless: 1) a subsequent non-provisional patent application or PCT application is filed within 12 months of the provisional patent application filing date; and 2) the subsequently filed non-provisional patent application is ultimately granted. Further, a provisional patent application becomes “abandoned” if a subsequent patent application is not filed as indicated previously.