By Andrew Currier, CEO & Founder, and Gillian Burrell, Lawyer & Patent Agent Trainee
Provisional patent applications are generally well known in the start-up community as an affordable way to protect patent rights, but it can be hard to locate practical information. Here are the questions that our clients most frequently ask us about provisional patent applications. Note that the information here is for general information only and is not formal professional advice. Please contact a PCK professional for formal professional advice.
1. Is a Provisional a Real Patent?
Phrased more accurately, “Is a provisional is a real patent application?” The answer is “Yes”!A provisional patent application is a legal document filed with the US patent office that can provide basic patent-pending protection. However, a provisional patent application is best described as a placeholder for a formal patent application. The provisional patent application expires in 12 months, so if you don’t file a formal patent application within a year, your provisional patent application dies.
Since a provisional patent application must eventually be converted into a formal patent application, you must ensure that all of the substantive content you want to include in your formal patent application is included in your original provisional patent application. The benefit of a provisional patent application is that it is a relatively inexpensive way to quickly secure a patent application filing date for your invention, but the risk of a provisional patent application is that you may inadvertently omit a critical piece of information that is necessary to support your formal patent application.
2. What’s the Difference Between a Provisional and a Formal Application?
Unlike a formal application, there are very minimal requirements for the contents of a provisional patent application and the patent office won’t even review your application. For that reason, provisional patent applications can look very different from formal applications. Provisional applications don’t require claims, and very often claims are omitted altogether. Sometimes start-ups file an academic paper, marketing materials, or a slide deck for a pitch—the provisional just needs to describe what the invention is.
A formal application is a very technical document, which should be prepared by a patent professional. The best type of patent protection is a formal patent application, but for cash-conscious start-ups, it’s common to accept the risk that a provisional patent application may eventually be found deficient, so that you can quickly and efficiently establish a filing date. A PCK professional can help you minimize that risk so you can get as much protection for your business as possible from your provisional patent application.
3. When Can I Say “Patent Pending”?
The phrase “patent pending” can be a powerful marketing tool to drive sales. You can use that term in marketing, sales presentations, and pitches starting on the date your provisional patent application is filed and until when your patent application expires or is abandoned. If you are in a pinch, you can even say “patent pending” as long as you have a genuine intention of actually filing a patent application and you follow through with that intention.
4. When Can I Tell People About My Invention?
You may already know that, strictly speaking, inventions should be kept confidential if you plan to obtain patent protection. Generally, a patent application converts a trade secret into another type of IP protection, so its important you get your patent application filed before you talk about it.
So when can you start telling the world about your amazing invention? As soon as you’ve filed the provisional patent application, you can release information about your invention without losing your patent rights. However, your protection will be limited to the contents of the provisional patent application, which means that only features of the invention that have been described in the provisional patent application can be safely disclosed. For this reason, some start-ups include their actual sales presentations or marketing materials in the provisional patent application.
5. What If I Change My Invention Later?
As a start-up, your product may still be in development. Luckily, there’s a few options to ensure that your patent application remains relevant, even after you pivot.
When you file the formal patent application, the provisional patent application can be updated to reflect the latest iteration of your product. A drawback to this approach is that new material added to the formal application will not have the same filing date as the features included in your original provisional application. Filing dates are of utmost importance because patent rights are awarded to the first person to file a patent application, not to the first person to invent.
To prevent someone else from beating you to the patent office, you can file additional provisional patent applications within the 1-year period before you need to file your formal application. Every time you make a significant update to the invention, update the original application and refile it. At the end of the year, you can compile all the provisional applications into one formal application.
6. Does a Provisional Give Me Worldwide Patent Rights?
A provisional patent application provides patent protection only in the US, however, as long as you have not previously disclosed your invention, in most cases you can use the US provisional application as a basis for filing applications in other countries up to a year later. When you formalize your provisional application, you’ll have to decide which countries to file in and pay filing fees for each country. The decision can be delayed by a further 18 months by filing your formal patent application as a PCT Application which extends your protection in most countries around the world (notable exceptions include Taiwan and Argentina). At the end of the 18-month period, or 30 months from the date of your provisional application, you’ll need to choose which countries to file in and pay the filing fees for each one.
7. Can I File a Provisional Patent Application in Canada?
Yes—sort of. Unlike the United States, Canada doesn’t have an official scheme for provisional patents. However, you can file an incomplete application with the Canadian patent office and then file a complete version within 12 months.
A drawback to the Canadian “provisional” is that it’ll cost the same as a regular application, whereas the US patent office offers a reduced fee for provisional applications. Another disadvantage is that the Canadian application will automatically be published online about 18 months after you file the application, unless you request to withdraw your application from publication. In contrast, a US provisional is never published. This is helpful because, if you decide not to pursue a formal patent application, you may want to keep your invention a secret.
For these reasons, a Canadian “provisional” is usually only recommended for start-ups that operate strictly in Canada and are not interested in obtaining patent rights abroad.
8. Can I Write My Own Provisional?
Yes, you can write your own provisional application. There is some degree of risk associated with this path and you could inadvertently make mistakes that harm your patent rights down the road. In an ideal world, your provisional patent application would be “formal-ready” and written by a patent professional, but for lean start-ups, a self-written provisional may be suitable. PCK runs a seminar called “How to Write Your Own Provisional”. Check the upcoming dates on our events page.
9. When Does a Provisional Patent Application Expire?
A provisional patent application automatically expires 12 months after the filing date. No extensions are available.
10. Can I Refile the Provisional After It Expires?
Yes, you can refile a provisional patent application after it expires. Note you can only re-file it AFTER the original provisional patent application has expired. Unfortunately, this means that you will need to repay the filing fees, and (more importantly) you’ll lose the benefit of your original filing date. This means that any prior art published between the original filing date and your new filing date will be counted against you when the patent office evaluates your formal patent application. Additionally, if anyone files an application for the same invention before you refile your application, their claim to the patent will trump yours.
11. Should I Be the Applicant, or Should I Set Up a Corporation?
In almost every circumstance, it is advisable to establish a corporation to be the owner and applicant of your patent application. Ownership issues can be very messy and expensive to resolve later on, so it best to incorporate now and put all of your business assets in the corporation’s name. If you are a sole inventor you may defer this decision, but if there are co-inventors it is extremely risky to have a patent application in the name of both inventors as each of you must agree with each other regarding every decision affecting the application.
12. What if There Is More Than One Inventor?
There is no limit to the number of inventors that can be listed on a patent application. Each inventor should sign an assignment document transferring his/her rights to the applicant, such as a corporation.
13. Can I Still File a Provisional if I’ve Disclosed My Invention?
Maybe. You can still file a US provisional patent application if you’ve disclosed your invention less than one year prior to filing your provisional patent application, however you will not be able to file internationally based on the provisional.
To maintain patent rights in Canada, within one year of public disclosure, you will need to file a Canadian formal patent application.
In the majority of jurisdictions, including Europe and China, you will not be able to secure patent rights after a public disclosure. Also, note that even offering your invention for sale, publicly or under NDA, is deemed a public disclosure of the invention in the USA. For more on filing options after a disclosure, read our article on grace periods.
PCK IP is one of North America’s leading full-service intellectual property firms with offices in Canada and the United States. The firm represents large multinational companies, scaling mid-size companies, and funded innovative start-up entities. PCK IP professionals include seasoned patent and trademark agents, engineers, scientists, biochemists and IP lawyers having experience across a broad range of industries and technologies. Contact us today.
The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.