|< Back to FAQ
I’m confused about the provisional patent application. Can I file it myself or do I need a lawyer?
|Q.||I’m confused about the provisional patent application. Can I file it myself or do I need a lawyer?|
|A.||You can file this type of application yourself since the Patent Office has made it much simpler than the standard utility patent application. The filing fee is $75. It does not require any legal language. However, you make sure that you have thoroughly described your invention and provided a good sketch if applicable.
–Gene Scott, Registered Patent Agent, Patent Law & Venture Group, 2082 Business Center Dr., Suite 240, Irvine, CA 92715
You need a patent practitioner (attorney or agent) to file a provisional application. Although the application does not require any claim(s), the specification must be written with the completeness and accuracy of a regular application. A non-professional would likely omit critical material which when later supplied would be “new matter” which would forfeit the filing date of the provisional application.
–Edward Gray, Ph.D., Registered Patent Agent, PO Box 66629, Mar Vista, CA 90066
You do not need a lawyer to file a provisional patent application. If you feel you can do a thorough job of writing a description of your invention, with drawings or sketches, these can be filed in the Patent Office with a one page form and a $75 filing fee. The provisional patent application lapses after one year unless you follow up with a complete patent application including claims and the full filing fee for a regular patent application. If you do this, I recommend retaining a patent lawyer who will draft suitable claims.
–William C. Crutcher, Patent Attorney, Gager & Peterson, One Exchange Plaza, P.O. Box 2480, Waterbury, CT 06722-2480
While it is possible to file a provisional and even a formal patent application pro se, I generally do not recommend doing so. A competent patent attorney should be able to review a draft provisional patent application prepared by yourself for a very minimal fee and advise you as to how to improve the application and file it for you. If you are serious about pursuing patent protection, you will probably spend close to $3,000 in filing, issue and maintenance fees. If your invention is worth anything at all, it is worthwhile to consult with an attorney. Many of the attorneys advertising in Inventors Digest charge very reasonable fees.
–Robert P. Bell, Registered Patent Attorney, 8033 Washington Road, Alexandria, VA 22308
Provisional patent applications are, in many ways, simpler and easier to file than non-provisional patent applications. But there are some very important things you need to know about provisional patent applications. First, you should understand that a provisional application does not give rise to the same substantive rights provided by non-provisional applications. This is because a provisional application is not examined and will not issue as a patent. Instead, provisional applications provide only a right of priority, that is, an established filing date. That’s not to say this isn’t a very important benefit. The filing date is recognized in major countries throughout the world.
Another important point to note about provisional applications is that there will be no benefits of any kind if a non-provisional application is not filed within the 12-month period that follows the filing of the provisional application. Some filers assume that there is an automatic conversion from provisional to non-provisional that occurs within the Patent and Trademark Office (PTO). Not true. Positive steps must be taken, and they must be taken within the noted time period. Getting back to the question, let’s take a look at the formalities involved in filing a provisional application.
To gain the benefits of this relatively new form of application, a filer needs only include a full disclosure of the invention including drawings where necessary, along with a cover sheet identifying the inventor(s) and noting that the application is a provisional application. A filing fee of $150 is required, as well. However, for independent inventors, non-profit organizations, or small businesses, this fee is reduced to only $75, provided a statement is filed to establish small entity status.
More good news is that a provisional application does not require a declaration or claims, generally considered to be the more complex aspects of patent applications. But, meeting these filing requirements can’t be taken lightly.
Invention disclosures presented in provisional applications must be just as thorough and clear as would be required in non-provisional applications. Since the purpose of the provisional application, as I’ve already noted, is to establish a recognized filing date for a subsequent non-provisional application to be filed within 12 months, heavy reliance will be placed on the completeness of the originally submitted invention disclosure. Claims defining the scope of applicant’s invention filed in the subsequent non-provisional application must find full and clear support in the original provisional application in order to gain full benefit of the early filing date.
Can you file a provisional application yourself? There is no doubt that many inventors can, and do, successfully draft and file their own applications, both provisional and non-provisional. But, given the importance and relative complexity of the application process, the PTO strongly advises prospective applicants to engage the services of a patent attorney or agent from among the 17,000 registered to practice before the PTO.
The PTO’s roster of registered attorneys and agents is available at any of more than 80 Patent and Trademark Depository Library across the country. Or it may be purchased from the Government Printing Office, Superintendent of Documents (stock No. 003-004-00674-9). This roster is also available on our World Wide Web site at http://www.uspto.gov/
–Don Kelly, Patent Examining, Group Director, U.S. Patent and Trademark Office, Washington, DC