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Everyone loves those stories about the someone they know who detailed their invention on a paper napkin and then filed the napkin as  a provisional patent application.  Its no surprise that many inventors find the option of  filing a provisional patent application attractive since doing so is considerably less expensive than filing a ‘regular’, or “utility” patent application.

Although the United  States Patent and Trademark Office’s (“USPTO”) newly revised Fee Schedule is nothing less than throughly confusing, its clear that filing a provisional patent application offers significant savings over utility patent applications.  For a  ‘vanilla’ provisional filing (e.g. no additional surcharges for a late cover sheet or additional claims or sheets), the USPTO currently lists a filing fee of $125 for a small entity.  For a small entity utility application, the fee would be the total of a $95 Filing Fee; a $310 Search Fee; and a $125 Examination Fee, which is $530. Additional charges such as for excess claims (in excess of three independent and in excess of twenty claims) may also apply.  So what’s not to like about a provisional patent application?

As a starting point, inventors should keep in mind that the USPTO does not substantively examine provisional patent applications (hence the lower fees).  Thus, the provisional patent application does not replace the utility patent application. The inventor will need to file a utility application within a particular timeframe if he or she wants to pursue the invention.  So a provisional application will not allow you to obtain preliminary feedback on the invention from the USPTO, nor will it dispense with the eventual requirement that you file a utility application (assuming that you wish to pursue patent protection on the invention).

Another consideration regarding provisional patent applications is the patent rule pertaining to the subject of “new matter.”  Multi-million dollar patent lawsuits have centered around exactly what is considered “new matter”, so designating new matter can be complex. Generally speaking, though, new matter is subject matter that an inventor might add to a utility application that wasn’t in a related prior-filed provisional application. The general rule is that the new matter would not be entitled to the filing date of the provisional application.  Thus, anything that the inventor forgot to add to the provisional application would not be entitled to the filing date of the provisional application, even if he or she adds it to a later-filed utility application that claims priority to the provisional. Thus, the actual content of a provisional patent application may become quite important.

In Part II, of this topic, IP For the Little Guy will discuss some strategies and pointers regarding provisional patent applications.

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