Every patent goes through a period known as “patent pending.” This means that your invention, process, or design is still under review within the US Patent and Trademark Office, but because you’ve filed all the right paperwork you’re entitled to warn the public that you’ll soon have a patent unless the USPTO says otherwise, and as such you’ll be able to retroactively go after anyone who infringes on your patent during this period.
The Provisional Patent
However, there’s another method you can use to extend this patent pending period (and thus your legal ability to retroactively protect your invention) by as much as a year. By filing for a provisional patent, you can effectively “save your place” in line for up to 365 days. After that, you have to file your application or else lose this limited protection.
While the provisional patent system was originally set in place to put American inventors on par with their foreign competitors (who get a one-year grace period between filing a patent in another country and filing one in America), in 2013 US law switched from a “first to invent” to a “first to file” system.
An Unfortunate Twist
What “first to file” means is that the priority of a patent is given to the first person to file a patent application rather than whoever can prove in court that he or she was the first person to invent what the patent describes. And while this system can be unfair, it does simplify legal battles over patents and encourage people to file patents rather than maintain trade secrets. This means patents are better able to fulfil one of their main goals, which is to improve the public body of knowledge.
This change also means that a provisional patent is no longer as secure as it might have been. Technically speaking, if you file for a provisional patent it means the USPTO hasn’t seen your application, and so if someone duplicates your invention and files an application during your grace period, that person is technically the first to file. You may still be able to win your patent after this point, but you’ll definitely be in for a complicated and expensive legal battle if you want to succeed.
Still, even with these downsides it may be worth your while to file for a provisional patent. Since you haven’t filed yet your patent will remain secret during this period (and you have the freedom to tweak it at this poin), and an extra year of protection translates to a potential extra year of exclusive profits. So if you think your invention is secure enough to risk a grace period (and if your patent lawyer agrees), then a provisional patent may be your best bet.