Save on Patent Fees by Filing As a Provisional Patent Micro Entity
If you’re an inventor or small business owner, filing as a provisional patent micro entity can save on patent fees. This status could reduce your filing and maintenance fees by up to 75 percent.
The USPTO has created various entity statuses to assist applicants and patent owners in qualifying for reduced fees. Generally, large entities pay higher fees than small ones while micro entities typically pay less than larger ones.
What is a provisional patent?
Provisional patents are placeholder applications that let inventors preserve their “filing date” while continuing research and development on their invention. This “patent pending” status provides them with additional time to develop the invention while protecting them against patent infringement litigation.
Filing a provisional patent has several advantages, such as securing a priority date for your invention before filing a standard utility application. This is especially helpful in cases where other patent applications are filed within the same year as yours and there could be confusion over who came up with the idea first.
In addition to receiving a priority date, you’ll also be able to apply the term “Patent Pending” to your invention for up to 12 months from when you file. This can help extend the profitable period of your invention by giving more time for building your business.
However, in order to take advantage of this benefit, you must convert your provisional patent into a nonprovisional application or file a new nonprovisional application within the 12-month period. As this can be an expensive process, it’s best to consult with an expert before making your decision.
One of the most significant components of your provisional application is a detailed description of your invention. This should include product details as well as any relevant drawings or diagrams that might be helpful to the patent examiner.
Additionally, provide a comprehensive list of references to prior art as this will aid the examiner during your patent prosecution process. Doing so will enable them to recognize any previous inventions that could pose problems with your invention.
Be sure to mention any revisions or additions you’ve made to your invention since filing the provisional patent application. Doing this allows the examiner to view any progress you’ve made, increasing the likelihood that your application will be granted.
How do I qualify for a provisional patent?
The United States Patent and Trademark Office (USPTO) offers a fee reduction program for small entities and micro entities. Qualifying inventors can save up to 80% on USPTO fees, providing an invaluable way to reduce overall patent application expenses.
Micro entity status can be obtained by filling out form SB/15A or SB/15B and meeting certain income criteria. The income requirement is based on your maximum qualifying gross annual income.
Income limits can change annually and may increase if you have multiple jobs. Therefore, it’s essential to monitor your earnings and stay under this cap.
It is essential to remember that false claims of micro entity status can result in the cancellation of your patent rights or even lead to their loss altogether. A fraudulent claim of micro entity status could invalidate your patent application and invalidate all future applications for it.
In addition to meeting the income requirements, you must submit a certification of entitlement for micro entity status within six months of filing your patent application. This certification must be signed by all inventors listed on the application.
Your certification should include a comprehensive written description of your invention, an acknowledgement of the inventors, and all materials that support it – such as theses, manuscripts, “Supplementary Materials” sections of journal papers, computer code, laboratory notebooks, and invention disclosure forms.
The written description and enablement should also include proof that you were the original inventor to invent your invention. This could include documents confirming when it was first disclosed, such as an original publication or patent application.
Finally, your certification should state that you do not intend to assign, license or otherwise convey your interest in the invention to a non-small entity. This requirement is an essential factor when filing for a provisional patent.
Furthermore, your certification should also state that you have not filed more than four patent applications and any other parties named as inventors on your provisional patent application do not qualify for small entity status. Failure to meet these requirements could result in rejection by the USPTO of your application.
What are the benefits of a provisional patent?
Inventors often feel the urgency to file provisional patents in order to safeguard their idea from potential theft by other inventors. Without protection, inventors could lose control of their creation and be left without recourse.
Filing a provisional patent application gives inventors the time they need to test their invention and decide if it warrants pursuing full patent protection. Additionally, it gives them an opportunity to showcase their creation to investors, suppliers, and licensees.
Provisional patent applications do not need drawings, though drawings can be beneficial. All that is required is a written description of your invention that should be sufficient to explain it to someone with ordinary skill in your field.
Many inventors fail to include enough detail in their patent descriptions, leading to a prior art issue later on in the process.
They often make the mistake of leaving out details or components in their patent description that could be claimed by others, giving them a false sense of security but may not provide enough protection to ensure success.
Depending on the nature of your invention, it may be necessary to include drawings or diagrams. This is especially pertinent if developing a technology or product that requires an intricate understanding of multiple processes.
Additionally, provisional patent applications can be filed at a lower cost than non-provisional ones. Typically, it only costs a few hundred dollars to file one for inventors or small companies; however, remember that there is still an filing fee which must be paid within 12 months in order to avoid additional expenses in the future.
Another advantage to filing a provisional patent application is to safeguard your right to apply for patents abroad. Many foreign countries require “absolute novelty,” so if you demonstrate your invention prior to filing for patent protection in the U.S., any foreign rights could be forfeited.
On the most important of all, getting your provisional patent application submitted as soon as possible ensures that your invention does not get missed from other patent applications. This is especially pertinent for pharmaceutical products where much of the value lies within the patent term.
What are the disadvantages of a provisional patent?
One major disadvantage of a provisional patent is that it does not guarantee you will get one. This could leave your invention vulnerable, even if it truly original and has an innovative method of working. Avoiding this mistake could prove costly if you have already invested both time and money into developing your product.
Another major disadvantage is that obtaining a provisional patent may not always be worth the expense. If you don’t think your invention will be valuable enough to warrant investing in an expensive patent, then don’t bother with the process at all.
If you are considering filing a provisional patent, be sure to read up on the process thoroughly and research other patent applications related to your field of interest. Doing this will give you an insight into what should go into your own application.
The USPTO website is an invaluable resource for example applications related to your field. These will give you insight into what should go in your application and how it should be structured.
You can also utilize this site to search for other provisional patents granted by the USPTO. Doing so will give you a good indication of what can be expected from your own patent application and make the process simpler for you.
Additionally, be sure not to divulge any trade secrets or confidential information in your provisional patent application. Doing so could expose the application publicly and result in the loss of patent rights.
Another problem with a provisional patent is that it only provides protection for one year. This means you must file for non-provisional approval within 12 months after filing your provisional patent, otherwise the patent will expire without official action from the USPTO. For many inventors this poses an obstacle, especially if there is substantial competition for their invention.