Most people who file for patents look forward to the day their patent is issued, wishing it could come sooner so that their invention is protected as early as possible by law. There are others, however, who want to slow the process of patent prosecution.
Why would someone want to delay the day their patent is issued by the U.S. Patent and Trademark Office (USPTO)? For some, the reason is purely financial. This is common among start-ups in which entrepreneurs understand the importance of filing for protection of their intellectual property as soon as possible, but lack the funds needed to see the patent procurement process through.
In some other situations, a company is ready to file a patent application, but they’re unsure of their invention’s value in the marketplace. Their idea shines on paper, but will it look as bright in real-world settings? In order to find out, they carry out time-intensive research that includes marketing, focus groups, advertising and brand-building efforts. By the time their research has concluded, they have a much fuller understanding of the invention’s potential commercial value – and whether it makes financial sense to proceed with patent procurement.
Provisional patent application
Those who want to slow patent procurement will often file an application for a provisional patent. The filing fee for a provisional patent is affordable: currently $300 ($150 for a small entity and $75 for a micro entity). And because provisional patent applications aren’t examined by the USPTO, entrepreneurs avoid examination fees: $800 (utility patent), $640 (design patent) $660 (plant) or $2,320 (reissue).
The company can file a nonprovisional application within a year of the provisional application and then use the provisional application filing date to proceed with the patent procurement process. In that way, a Law.com article states, they can delay most of the costs for up to a year.
It should be noted that the provisional application should include all of the information that will be in a nonprovisional application so that when that nonprovisional application is filed, it will be possible to receive the benefit of the provisional patent application’s filing date.