Disadvantages of a Provisional Patent Application

Copied from my answer on Quora.com
Daniel Becker
Daniel Becker, Patent Attorney and Early-stage Engineering

The literal difference between a Provisional Application and a Non-Provisional Application is that a Provisional does not get you into prosecution.

A Provisional requires a Non-Provisional to be filed no more than a year later in order to amount to anything, whereas the Non-Provisional could stand on its own without following a provisional application, filed on the same day.

So the literal disadvantage is whether or not it is worth the greater upfront planned cost of cumulatively contemplated tasks of a prosecution, as opposed to not having an additional year to get a Non-Provisional.

Filing either establishes a date of Priority, and thereby earns “Patent Pending” status, but that ceases to be true if the Non-Provisional is never filed, whereas the Non-Provisional is unlikely to no longer be literally pending, as a practical matter, before the time at which the claim to priority established by the Provisional would have lapsed.

One advantage to a Provisional is that, if you are ultimately successful in obtaining a patent, and the appropriate steps were taken to ensure the issued patent is able to secure the priority date of the provisional application, then there is technically a longer period of enforcement of the patent, if it was originally able to establish its priority date by a Provisional Application.

A patent’s period of enforcement is 20 years, measured from the date of the FILING of the NON-Provisional. Note that this is different from the date of PRIORITY, which can be established by a Provisional Application. This technically means that one can create a sort of ~21-year~ patent, if, all else being unaffected, the priority date (x) was created by filing a Provisional Application, and then filing a Non-Provisional on literally day (x+1 year).

However, this comes at a price. Because a provisional doesn’t get docketed to be examiner, an otherwise identical application (meeting the requirements of a non-provisional) filed as non-provisional, on the same day, stands a significantly better chance of being issued sooner. So while the period of enforcement MIGHT be longer by filing P and then NP, that strategy MIGHT delay the day upon which the successful applicant may actually wield the patent against infringers.

Provisional applications only require a disclosure and a drawing and a fee. A Non-provisional application also require the claims which will form the basis of the enforceable scope (definition) of the patent, a significantly higher standard of organization and disclosure scrutiny and a significantly larger fee. Therefore, if an applicant has a messy or odd or disorganized or confusing or excessively large pile of matters that would make determining scope very difficult, or fail to meet the higher standard for the disclosure, or the cost would be unmanageable, filing a provisional might be the only pragmatic way for the applicant to obtain a usefully early priority date. Again, note that this detriment for such an applicant is a likely larger overall cost and likely later issuance date.


Daniel Becker is a Registered Patent Attorney and NC licensed Attorney living in Raleigh, NC, practicing for the law firm of Olive Law Group, PLLC. in Cary, NC, and serving the greater Raleigh, Durham, RTP area. He also serves inventors extending to North Carolina as a whole, and beyond, for such excellently-communicating inventors that are able to facilitate an out-of-state representation (Patent representations are Federal). He holds a JD from Wake Forest Univerity School of Law and a BS Mechanical Engineering, Magna Cum Laude from North Carolina State University and Certificate in Automotive Engineering from Clemson University International Center for Automotive Research. He offers Patent Prosecution, Engineering review, and early-stage engineering services for inventors and innovative companies, particularly those having widgets that he finds particularly nifty.