Filing a provisional patent application can establish an early U.S. filing date for the subject matter it adequately describes. That filing date can be important because the United States generally follows a first-inventor-to-file system when different inventors independently seek patent protection for the same invention. A provisional patent application can also give the inventor up to 12 months to further develop the invention, evaluate its commercial potential, seek funding or business partners, and prepare a corresponding nonprovisional patent application. During that period, the invention may be identified as “Patent Pending.”
Unlike a provisional patent application, a nonprovisional patent application has additional formal requirements, including patent claims, an inventor oath or declaration, and filing, search, and examination fees. It can also require considerably more time and expense to prepare. For those reasons, many inventors initially file a provisional patent application to establish an early filing date while giving themselves additional time to improve the invention, evaluate its commercial potential, and decide whether to invest the time and money required to prepare and file a nonprovisional patent application.
Publicly or otherwise non-confidentially disclosing an invention, or offering it for sale, before filing a patent application can affect both U.S. and foreign patent rights. Although U.S. law may provide a limited one-year grace period for certain inventor-originated activities, many other countries may deny patent protection when a public disclosure occurs before a patent application is filed. Accordingly, when any disclosure or offer for sale is planned, the safest approach is generally to file a sufficiently complete provisional patent application first.
If the invention has already been disclosed or offered for sale, the inventor should file a sufficiently complete provisional patent application as soon as possible and then promptly contact a licensed patent attorney regarding the potential effect on available U.S. and foreign patent rights.