Filing a provisional patent can be a powerful move if it’s timed right, disclosed thoroughly, and aligned with your overall business strategy. Here’s what founders and inventors need to know about timing, trade-offs, and disclosure to make provisional patents a strategic asset.
Why Weak Provisional Patents Fail Inventors
Startups run on limited time and money. When it comes to protecting intellectual property (IP), many founders rush into filing a provisional patent application (PPA) because it seems like a cheap, quick way to claim ownership.
The problem? A weak or incomplete provisional wastes time, wastes money, and may not protect your IP rights at all.
This post draws from insights shared by Andy Godsey, COO of Summit Venture Studio and founder of The Inventor Playbook, during a recent Midday Connect session. He was joined by Andy Gabriel, Attorney at Law and Director of IP at Vitek Intellectual Property.
Godsey illustrated what he calls the “nightmare scenario” through the case of the New Railhead provisional patent. Their provisional failed to disclose all uses of their drilling invention. Even though New Railhead established an early priority date, a competitor, Vermeer, entered the market. When litigation followed, New Railhead’s patent was invalidated. Years of work, investment, and competitive advantage were lost.
Definition: Provisional Patent Application (PPA)
A provisional patent application is a placeholder filing with the U.S. Patent and Trademark Office (USPTO) that establishes an early priority date. It is never examined and must be followed by a non-provisional patent application within 12 months to secure patent rights.
The Risks and Costs of Weak Provisionals
Filing a provisional patent isn’t simply about slapping “patent pending” on your slide deck. If done poorly, it can create vulnerabilities that cost you customers, investors, or even your invention.
Here are three common risks Godsey and Gabriel highlighted:
- Inadequate disclosure. If your application doesn’t fully explain how to make and use the invention, it may not hold up in court.
- Filing too early. Many founders file before customer validation. If the market later tells you that the true value of your invention lies elsewhere, your original filing may not protect it.
- Filing too late. Under today’s first-to-file system, whoever gets to the patent office first usually wins. Delay too long, and competitors (or even your own public disclosures) can bar your rights.
Definition: First-to-File System
Since 2013, the U.S. awards patents to the first inventor who files, not the first who invents. This change makes filing dates critical in determining ownership.
Another overlooked danger? Global rights. In the U.S., inventors have a one-year grace period after public disclosure. But in many countries, any disclosure before filing means you’re barred from protection. A demo at a trade show, a webinar, or even a LinkedIn post can kill your international IP options if you haven’t filed first.
How to File Provisional Patents That Hold Value
So how can inventors and founders file provisions that protect value rather than jeopardize it? Godsey and Gabriel outlined several best practices.
1. Understand the Bargain
Every patent is a trade-off: the government gives you a temporary monopoly in exchange for telling the world how to do what you invented. This means your provisional must be enabling: detailed enough for someone skilled in your field to reproduce the invention.
Definition: Enabling Disclosure
An enabling disclosure provides enough detail that a “person skilled in the art” (someone with ordinary expertise in the field) can replicate the invention without undue experimentation.
2. Treat Your Provisional Like It Matters
While provisional applications are technically placeholders, treating them casually is a mistake. Best practice is to prepare your provisional as if it were a full non-provisional:
- Include drawings, examples, and variations.
- Use AI tools as a brainstorming partner to identify potential uses you might overlook.
- Imagine yourself as a competitor: how would you design around this claim? Include those variations.
3. Balance Timing and Validation
There’s a tension between filing early (to secure rights) and waiting until validation clarifies what customers actually care about, what drives them to your solution. Godsey suggested a practical approach:
- File when your invention is clear enough to describe fully.
- Gather feedback quickly to see if new variations should trigger additional filings.
- Don’t be afraid to file more than one provisional if your invention evolves. But know the costs and risks of managing multiple priority dates.
4. Plan Beyond the Filing
A patent is not a business plan. Once you’ve filed the provisional application for patent, think about how you’ll actually use your IP:
- To license technology
- To secure partnerships
- To strengthen valuation in fundraising or M&A
Litigation is rarely a realistic option for startups. It involves too much time and money. It’s a distraction from the work to be done. As Gabriel put it, the real question is how your patent supports your strategy – not whether you can sue.
“Most patents, frankly, are worthless. It’s just the hard truth. Unless they’re tied to evidence of use and strategic positioning, they don’t drive business value.”
Andy Godsey
5. Know the Myths (and Avoid Them)
Myth: A provisional patent protects my invention.
Reality: It only holds your place. Without filing a non-provisional, it’s worthless.
Myth: A patent gives me the right to sell.
Reality: A patent gives you the right to exclude others, not to market freely. You could be infringing on thousands of other patents.
Myth: If I get a patent, I’ve made it.
Reality: Only 3-5% of patents in large portfolios typically have meaningful economic value.
Recap: The 301-Level Takeaways
Timing matters. File too soon or too late, and you risk losing rights.
Disclosure matters. Weak provisionals create weak patents.
Strategy matters. A patent without a business use case is just expensive paper.
Approach your provisional patent strategy with the same rigor you apply to your business model. Evaluate trade-offs, anticipate risks, and focus on building assets that actually drive value.
Provisional patent strategy is about more than filing early. You must consider timing, trade-offs, and disclosure that determine whether your invention becomes a valuable asset or a worthless piece of paper. By understanding how provisions work, inventors can avoid common pitfalls and build stronger intellectual property portfolios.
Want more practical insights and real-world strategies? Join us weekly for Midday Connect, where founders and experts unpack startup topics like this one.
FAQ
A provisional patent application (PPA) is a temporary placeholder that establishes a filing date but is never examined. A non-provisional application undergoes review by the USPTO and can result in an issued patent.
A provisional patent holds your place for 12 months. If you don’t file a non-provisional within that period, the provisional expires and your priority date is lost.
Not automatically. To preserve foreign rights, you may need to file under international treaties and multiple countries. Many countries require absolute novelty, meaning you must file before any public disclosure.
Yes. Inventors can self-file. But risks are high: if your disclosure isn’t enabling or complete, your later patent may be invalid. Consulting a patent attorney or agent is strongly recommended.
Filing fees for small entities are a few hundred dollars. Attorney preparation can range from $2,000-$5,000+ depending on complexity. Non-provisional filings usually cost more.
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Presenter Links:
Andy Godsey on LinkedIn
Watch Andy’s full Midday Connect presentation on YouTube.
