Does it makes sense to file a provisional patent application?

Many inventors ask: “Why would someone file a provisional application instead of a non-provisional application?”  Why pay for two application filings, especially since the provisional application will expire after one year from filing. I often respond by answering that if you believe that your invention is at a stage where it is ready to be sold, then there are two main reasons as to why it may make sense to file a provisional patent application instead of a the full non-provisional application (note that some people refer to the full non-provisional as a “utility” patent application but in reality they are both utility applications – see this post). 

Cost savings (or not?)

The first reason it may make sense to file just the provisional is cost. The upfront cost of a provisional application is a lot less (usually half the cost of the full non-provisional). Some people simply don’t have the funds to file a non-provisional application or they are not yet ready to invest that much into their invention so they choose the less expensive provisional option. The one-year grace period provided by a provisional application may give these inventors time to market test their invention, find investors, and even find licensees which may be used to fund the non-provisional application. Note that doing the provisional first and then the non-provisional is actually more expensive in the long run but less expensive upfront.  If done properly, this approach will not impact patent term

Product Development

The second reason is adding product development time. Once you file the non-provisional application you are essentially “stuck” with what you file.  In many cases people are still working on their idea and it’s not at a production ready state.  In those cases, it often makes sense to file the provisional first and use that one-year time period in which the provisional is pending to further refine the invention.  Then at the non-provisional stage you can include any changes and refinements. However, it is also important to note that the changes and refinements in the non-provisional application will not have the benefit of the filing date of the provisional application but will have the filing date of the non-provisional application.

If neither of these reasons apply to you, then it may make sense to skip the provisional patent application and file a non-provisional application instead.

old-patentSome old timers may say a provisional does not ever make sense. Although that may true when looking at the provisional strictly through a legal or patent lens, that blanket statement fails to account for business and practical reasons why a provisional could make sense for some people.    A few years ago we sold a provisional patent application for over $50,000 which was a pretty good return on investment.