Michael J. Foycik Jr., Esq.

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A provisional patent application
Each “how to patent” subject is discussed in detail below. Here are ways to get a patent.

A slightly better title would be “How to Get a Provisional Patent Application.“ That would be more correct, as explained below. It is easy to get a provisional patent application, which gives “patent pending” status but cannot in itself be “patented.” Instead, a provisional patent application holds the date (as the date of filing), protects the owner against later copiers, and permits later filing of a utility (“regular”) patent application.

Why get a Provisional Patent Application? It is less costly, and has a lower government filing fee, as compared with a utility patent application. It takes less effort to prepare, and needs no formal drawings and no signed Declaration.

Anything can be the subject of a provisional patent application. It provides defensive protection against later imitators. And, it can be the basis of a later utility patent application. It’s very useful to get a provisional patent application!

So what's the catch? The catch is, the provisional patent application lasts for only one year, after which the idea belongs to the public unless a utility patent application has been filed during that year.

So why file a Provisional Patent Application? If you are publishing the invention or showing it to potential investors or distributors or at a trade show, then a Provisional Patent Application will secure the date of filing, and can protect you against later imitators. How can it protect? It would prevent a competitor from copying your idea and patenting it themselves, then using the patent against you. Yes, that really happens sometimes! And, if the provisional application is followed up within one year by a utility patent application that issues as a patent, then it would allow you to seek damages in court.

Do you need to wait for a patent to issue before commercializing your invention? No, not at all! In fact, a pending patent application can be even more valuable than an issued patent in some cases, and a pending provisional patent application can be sold, assigned, or licensed.

What do you need to get a provisional patent application? You need a written description of the idea. And, it is helpful to provide drawings or sketches of the idea or invention, preferably with numbers that can be referred to in the body of the written description. The drawings do not need to be like blueprints; they can be simple or very rough, as long as they can be understood in connection with the text in the provisional patent application. And, it is not necessary to have a working model.

Here's a simple example showing how to get a provisional patent application for an idea for a very simple and amusing invention. The simple idea: add a blinking light to a pencil eraser. For the moment, we aren't concerned with whether it has been done before. For now, the idea would be expressed in words, written just as above, as the text or body of the application. And, since it is possible to illustrate the idea in a drawing, we would also add a sketch showing where the light should be placed on the eraser. The parts shown in the drawings should be numbered, for easy reference. The text would refer to the features of the drawings, and name the parts indicated by numbers, and also explain the function or purpose of the parts. What else should be shown in the drawings? The light should have a power source, for example a small solar panel or a small battery, and connecting wires should be shown connecting the power source to the light.

It is helpful to add a claim to describe the invention broadly, such as the following:

Claim 1: A pencil eraser having a light, comprising: a pencil body and an eraser member attached at one end of the pencil body; a light source mounted on the eraser; and a power source connected to supply power to the light source.

Standard text is then added including sections titled: background of the invention; summary of the invention; brief description of the drawings; and an abstract of the disclosure. This part is not usually hard to do, but can take some time. For a provisional patent application, this text can be extremely short.

Last, a cover page including a Transmittal sheet is prepared, listing what is being filed with the US Patent Office. The Transmittal page to get a provisional patent application is a specific form required by the US Patent Office. We would also normally attach a check for the amount of the US government filing fee , and a postcard filing receipt. The check can be omitted, but in that case the US Patent Office will send a notice asking for the missing check along with a relatively small late fee; the original filing date is preserved once the fee is paid. The government filing fee is currently $110, but changes regularly; call or email us to get the correct government filing fee.

The provisional patent application is not examined in the usual sense. The US Patent Office only checks for certain formalities. The provisional patent application cannot itself mature into a patent, though it can support a later-filed utility patent application.

We can prepare a provisional patent application for you, at very low cost. Call us for details! We are happy to discuss your goals and interests, and what you are seeking to protect. We can explain what might help, and the lowest cost ways to get the needed protection. This is at no charge. At this point we usually can provide a fixed fee estimate, based on your brief description of your idea. That is confidential. If you wish to proceed further, then you would provide one half the estimated amount in advance, and the other half after you have approved a final draft that is ready for filing with the US Patent Office.

And that is how to get a provisional patent application!

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.