The first stage in any patent application process is preparing and filing a patent application. If the patent application is a design patent application, there are no real shortcuts, but the costs associated with the preparation and filing of design patent applications are much less than those associated with filing full, non-provisional utility patent applications, whether US or International. When it comes to utility patents (as distinguished from design patents), applicants may prepare and file a provisional patent application instead of a full, non-provisional utility patent applications, initially, and then follow through within one year by evolving the provisional patent application into the full, non-provisional utility patent application.

Initially filing a provisional utility application, rather than a full non-provisional utility application can save the applicant a significant amount of money up front, but please note that a provisional filing only saves paying the costs for a full utility application for one year. Put another way, filing a provisional patent application “gets” the applicant to the patent office first, but must be modified into a full non-provisional utility application and filed within one year of the provisional application filing date if the provisional patent application is to be relied upon for priority, i.e., as a first to file date for the non-provisional utility patent application. In that sense, the provisional patent application essentially is a short-cut that can effectively buy the applicant one year before investing in the cost of the full patent application. Since March 16, 2013, we in the US are a “first to file” country, in harmony since then with the rest of the world. This means that merely inventing is not enough, that the inventor(s) must file at the US Patent Office first because even if he/she invents before another, who invents essentially the same thing, and that other gets to the Patent Office Before the first inventor, the first inventor is just plain “out of luck,” i.e., can never realize patents rights.

Please note, however, that a provisional application is not a “shortcut” or a “down & dirty” application that can hold the place for a later-filed non-provisional utility patent application, unless it “sufficiently” discloses the invention under 35 USC 112(a).  That is, the provisional application must be competent (it must evidence to one of ordinary skill in the art pertaining to the invention) that the inventor(s), at the time of filing the provisional application, had possession of the invention as claimed in the issued patent that evolved from the non-provisional utility patent application, which itself evolved from the provisional.  If the claims that issue include something added during preparation of the non-provisional utility patent application, or otherwise end up in the claims during prosecution, and the same claim feature must be relied upon to distinguish prior art (for example, if the patent is challenged in a litigation) found to be available within one year prior to filing the provisional, the validity of the patent may be on shaky ground (please call to discuss in further detail).