When Should You File A Provisional Patent Application?
- This answer depends on your situation.
Technically, a provisional patent application can be filed at any time, because there are nearly no filing requirements and provisional patent applications are not examined unless you file a non-provisional patent application. However, just because you can file a provisional patent application at any time, doesn’t make it a good idea.
The filing requirements for a provisional patent application are so low that you can literally pick up a random piece of paper on your desk and file it as a provisional patent application. The USPTO processes and holds all provisional patent applications the same, regardless of content. This is why there are so many provisional patent application scams.
The timing of when to file a provisional patent application is a tradeoff.
As Soon As Possible: Many inventors prefer to file a provisional patent application as soon as one or more inventors can describe how to make and use the invention as it will be described in the claims to avoid getting scooped. This strategy is great for winning the “race to the patent office.”
However, you will only get protection for the invention as claimed in your non-provisional patent application. If the concept of your invention (as claimed) changes after you file the provisional patent application, then those changes will probably not be entitled to the filing date of your provisional patent application.
Therefore, many inventors and assignees prefer to invest time developing their understanding of the invention before they file a provisional patent application. They might also want to study the market to determine if it will be worth their time and money to file a provisional patent application. The tradeoff is that every day you delay, you could get scooped by someone else.
As Informed As Possible: A second time to file a provisional patent application would be after taking some time to develop the invention and study the market. This extra time could broaden your concept of the invention and allow you to better protect your invention by drafting broader or more focused claims, which can prevent competitors from design around your patent. You can also study the market for your product or process well enough to determine if it will be worth your time and money to file a provisional patent application.
Just Before You Publish Or Sell: A third time, and the latest time that you would want to file, is just before you plan to publish or publicly disclose your invention. For example, many startups wait to file a provisional patent application until just before they plan to discuss or pitch their business to potential investors. Many universities file a provisional patent application just before a professor plans to publish their findings.