The Patent Light

The cost of a provisional depends on the invention.  An invention that takes 20 drawings to describe will cost more than an invention that takes 3 drawings to describe.

A provisional must meet most of the requirements of a regular utility patent.  In other words, the provisional must contain a written description of the invention (not just a description of the idea underlying the invention) and enable one skilled in the art to make and use the invention by reading the specification and drawings of the patent application.  If these requirements are not met, the provisional may not provide any patent protection.

In fact, the only theoretical difference is that a utility application must have claims where a provisional is not required to have claims.   However, under the relatively new American Invents Act, there are references to the claimed invention.  So, many lawyers have been including claims in a “full provisional.”  Furthermore, if international protection is important, the provisional must have claims to be recognized by foreign patent offices, such as the EPO.  (If foreign filing is important, the provisional should actually have “European Style” claims so that Europe will accept the filing date of the provisional.  A discussion of an “international” ready provisional is beyond the scope of this post. Just remember that if foreign filing is important, the provisional should cost more and be adapted for acceptance later by other patent offices.)

From a practical perspective, the client should think of the full provisional as a first draft of the utility application.    A “US only” provisional should have all of the required substance, but can forgo some of the formalities because the provisional will not be examined.  So, if the costs of a utility might average $1000/page of drawings, the costs of a provisional might average $700/page of drawings.

Additionally, because of the “first to file” provision of the AIA, it is important to get applications on file as soon as possible.  U.S. inventors and companies no longer have the luxury of waiting and relying on evidence such as inventor’s notebooks.  Consequently, many lawyers have been using the concept of filing at least two provisionals.  The first provisional is a “quick and dirty” filing or presentation of an idea, but may not fully describe or enable the invention in as much detail as a full provisional.  Hopefully, the first provisional might poison the waters for your competition and give you a first priority date (depending on the detail of the description).  However, because the application may not have been fully thought out, the first provisional might not convey the patent rights of a full provisional.  The theory is that it can’t hurt and might help.  So, the process is to file the “idea provisional” within days of receiving the invention disclosure, then immediately (or as soon as practical) follow up by filing a full provisional.   The costs of the these “idea provisionals” are around $1500.

In sum, the costs for filing a “US only” provisional application can be estimated to be:

First or “idea” provisional           $1500

Second or “full” provisional        $700/per page of drawings (assuming at least 5 drawings).