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By Richard Gearhart
Founding Partner

Welcome to IP in a minute with Richard Gearhart of Gearhart Law. Thanks for joining us today, and today we’re going to be talking about provisional patent applications.

A provisional patent application is a placeholder patent.  Its main advantage is that it can be modified for up to a year after it is filed. Moreover, once a provisional is filed, the inventor achieves patent pending status. Preferably, the provisional application is filed as a full application, that is it meets all the requirements of a utility application, and includes a full set of claims, drawings, analysis of the prior art and a full specification. Under these circumstances the inventor gets the full protection of a non-provisional (usually a utility) application, but has the advantage of achieving patent pending status and being able to make changes to the application during the one year period. 

For this reason provisional applications are a good choice for inventors still working on their concept, who are planning to get a designer or a prototyper involved, and who foresee that there may be changes to the application down the road.

Another advantage of the provisional application is that it effectively gives the inventor an additional year of patent term. Under U.S. laws the 20 year term for a patent begins on the date the non-provisional (which is usually a utility application) is filed. Typically, the non-provisional application is filed one year after the provisional application is filed. Thus, the inventor gets the benefit of the extra year between the provisional filing date and the non-provisional (utility) filing date.

Our recommendation is to file a complete provisional application, having all the features that the non-provisional will have. This gives the inventor the full value of the protection starting from the date that the provisional is filed. However, U.S. patent laws allow provisional applications to be filed without all of the requirements of the non-provisional. So in certain circumstances a provisional may be filed without claims, or drawings, or even a detailed specification. No matter what is filed, it must meet the enablement requirements under US patent law. However, these watered-down provisional applications, sometimes known as bare-bones provisionals, or half provisionals, can be valuable if an application needs to be filed quickly in order to preserve the filing date due to a conference, a one year bar date, etc.

You should consult with your patent professional to determine which type of application is appropriate for your circumstances.

About the Author
Richard Gearhart, Esq. is the founder of Gearhart Law and the host of a weekly radio show for entrepreneurs called “Passage to Profit”. He has built a firm with an international presence that helps entrepreneurs from around the world with their patent, trademark and copyright needs. Richard commands a breadth of experience that comes from nearly 30 years of practice in the writing and prosecution of hundreds of patents, and in all aspects of Intellectual Property law. In 2022, Richard was recognized by ROI New Jersey as a 2022 ROI Influencer in the Law List category for being one of the best of the best in New Jersey for intellectual property law. Gearhart Law emerged from Richard’s passion for entrepreneurship and startups and his belief that entrepreneurship grows the economy and creates jobs. When we started Gearhart Law, our goal was to help and support the new business ventures of 500 entrepreneurs and inventors. After 12 years, the firm has far surpassed this goal; today, we look forward to helping even more inventors and entrepreneurs get off to a great start and reach their own goals.