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Sean Christian Connolly

Austin Patent Attorney
Black and white logo for the Law Office of Sean Christian Connolly, an Austin Texas intellectual property and patent attorney firm.

Sean Christian Connolly

Austin Patent Attorney
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Panoramic banner of the Lady Bird Lake Boardwalk in Austin Texas at golden hour with abstract floating golden mechanical blueprints representing provisional patent filings provided by Sean Christian Connolly, an Austin Texas patent attorney with a physics degree from the University of Texas at Austin, seven years of engineering experience, and with over seventeen years of patent prosecution experience.

Provisional Patent Applications — Austin, Texas

A well-drafted provisional patent application establishes your priority date immediately, gives you 12 months of patent pending status, and costs significantly less than a full application — without sacrificing the technical depth needed to support the broadest possible claims in the non-provisional that follows.

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What a Provisional Patent Application Does

A provisional patent application is a simplified filing that establishes your official filing date at the USPTO without beginning the formal examination process. It gives you 12 months of patent pending status and buys you time to develop your invention further, assess market viability, and decide whether to commit to the full non-provisional application costs.
 

A provisional is never examined by the USPTO and never becomes a patent on its own. Its sole function is to establish your priority date. Within 12 months you must file a non-provisional patent application claiming priority to the provisional, or the provisional expires and you lose that priority date.

An open calendar planner and gold drafting pencil on an executive desk overlooking Mueller Lake Park in Austin Texas at twilight, representing what a provisional patent filing provided by Sean Christian Connolly, an Austin Texas patent attorney with a physics degree from the University of Texas at Austin, seven years of engineering experience, and with over seventeen years of patent prosecution experience, does.
Precision engineering calipers resting on a technical draft schematic with the word Seaholm with the base plaza of the Frost Bank Tower in Austin Texas visible in the background at sunset, representing well-drafted provisional patent applications provided by Sean Christian Connolly, an Austin Texas patent attorney with a physics degree from the University of Texas at Austin, seven years of engineering experience, and with over seventeen years of patent prosecution experience.

Why a Well-Drafted Provisional Is Critical

This is the most important thing to understand about provisional applications: a provisional is only as good as what it discloses. A thin, hastily-drafted provisional that does not adequately describe your invention's key technical aspects will not support the broad claims you want in your eventual non-provisional application.
 

I see this mistake regularly from inventors who filed a minimal provisional themselves and then discovered a year later that they could not claim priority to it for the claims they actually needed. A well-drafted provisional takes real effort — it should describe your invention in enough technical detail to support every claim you plan to pursue in the non-provisional.

When a Provisional Makes Sense

A provisional application is typically the right first step in several situations. When your invention is mostly developed but still being refined — the provisional locks in your priority date while you continue development. When you need to establish your filing date before a public disclosure such as a conference presentation, product launch, or investor pitch without an NDA. When you want to use patent pending in marketing and investor conversations immediately. When you need more time to assess market viability before committing to full prosecution costs.

For Austin startups going through fundraising cycles the provisional is particularly valuable — it establishes IP priority before investor conversations while deferring the full prosecution investment until funding is secured.

An open legal file folder containing technical designs on a corporate desk overlooking the lit-up tech offices of the Riata Vista corridor in Austin Texas, representing when a provisional patent application provided by Sean Christian Connolly, an Austin Texas patent attorney with a physics degree from the University of Texas at Austin, seven years of engineering experience, and with over seventeen years of patent prosecution experience, makes sense.
A premium glass and walnut hourglass timer with amber sand grains on a desk overlooking the Loop 360 tech corridors in Austin Texas at golden hour, representing the 12-month window of a provisional patent application provided by Sean Christian Connolly, an Austin Texas patent attorney with a physics degree from the University of Texas at Austin, seven years of engineering experience, and with over seventeen years of patent prosecution experience.

The 12-Month Window — Strategic Use

The 12 months following a provisional filing are among the most strategically important in your patent timeline. During this window you can refine and improve your invention, conduct market research to assess commercial viability, explore licensing opportunities, secure manufacturing partnerships, raise seed or pre-seed funding using patent pending status, and determine which international markets warrant PCT or Paris Convention filings.

I advise provisional filing clients throughout this 12-month window on continuation strategy, international filing decisions, and how to position their provisional disclosure for the strongest possible non-provisional claims. The relationship does not end at filing — it is the beginning of a prosecution strategy that builds over time.

My Engineering Background Protects Your Future Claims

Because I understand your technology at an engineering level — from my background in laser lithography, semiconductor manufacturing, optics, and physics from the University of Texas at Austin — I draft provisional applications that capture the technical substance of your invention accurately and comprehensively. This directly protects your ability to pursue broad claims in the non-provisional.

Many patent attorneys draft provisionals by describing what the inventor tells them in their own words without genuinely understanding the underlying engineering. The result is a provisional that misses key technical aspects of the invention or describes it at too high a level of abstraction to support broad claims. My approach is different — I engage with the engineering details, ask the right technical questions, and produce a provisional specification that functions as a strong foundation for your entire prosecution strategy.

Hyper-detailed mechanical hardware assembly inside an engineering suite overlooking the rolling ridges of West Lake Hills in Austin Texas at sunset, representing the importance to a provisional patent application of the engineering background of Sean Christian Connolly, an Austin Texas patent attorney with a physics degree from the University of Texas at Austin, seven years of engineering experience, and with over seventeen years of patent prosecution experience.
Polished brass scales of justice on an executive desk overlooking the illuminated Texas State Capitol building at twilight representing provisional patent cost structures provided by Sean Christian Connolly, an Austin Texas patent attorney with a physics degree from the University of Texas at Austin, seven years of engineering experience, and with over seventeen years of patent prosecution experience.

Provisional Application Costs and Timeline

A provisional patent application involves attorney fees for drafting and USPTO government filing fees. Individual inventors and small businesses qualify for reduced USPTO fees as small entities and in some cases as micro entities — reductions that can be significant. I provide a transparent cost estimate during your free consultation so you know exactly what to expect before committing to anything.

The drafting timeline for a provisional depends on the complexity of your technology and the completeness of your invention disclosure. For most inventions I can complete a well-drafted provisional within four to six weeks of receiving sufficient technical information. For urgent situations — I can often work on an accelerated timeline. Contact me as early as possible so we have adequate time to produce the strongest possible provisional specification.

Serving Austin and all of Central Texas. I work with clients throughout Texas and nationwide.

[ Provisional Patent Application FAQs — Austin, Texas ]

Question: How much does a provisional patent application cost?

Answer: The cost of a provisional patent application involves attorney fees for drafting plus USPTO government filing fees. Small entities — independent inventors and small businesses — qualify for reduced USPTO fees that are significantly lower than large entity rates, and micro entities may qualify for further reductions on top of that. Attorney fees for drafting depend on the complexity of your technology and the amount of technical documentation you can provide. I provide a transparent cost estimate during your free consultation based on your specific invention. The cost of a professionally drafted provisional is significantly less than a non-provisional application, making it one of the most cost-effective investments available for protecting an invention at an early stage.

Question: What happens after I file a provisional?

Answer: After filing you receive a filing receipt from the USPTO confirming your priority date. You have exactly 12 months to file a non-provisional utility patent application claiming priority to the provisional. If you do not file the non-provisional within 12 months the provisional expires and you lose that priority date. I advise clients throughout this window on strategy timing and international filing decisions.

Question: Can I file a provisional myself?

Answer: Technically yes, but I strongly advise against filing a thin provisional without professional help, for most inventors. A provisional that is inadequate — that fails to fully disclose the invention with the technical depth needed to support broad non-provisional claims — will not provide the priority date protection you expect for claims the examiner finds are not supported by the provisional disclosure. If you come to me later to draft the non-provisional based on a self-drafted provisional, I can only build on what that provisional actually discloses — if it missed key technical aspects of your invention, those aspects will receive only the later non-provisional filing date, potentially after prior art has emerged in the meantime. A professional provisional costs more upfront, but it provides the foundation needed for strong non-provisional claims — potentially saving you far more in protected claim scope than you saved by filing it yourself.

Question: What is the difference between a well-drafted provisional and a poorly-drafted provisional — and why does it matter so much?

Answer: The practical difference between a comprehensive provisional and a thin, hastily drafted provisional is visible years later when the non-provisional claims are being written and prosecuted. A comprehensive provisional describes the invention at multiple levels of generality — the specific embodiment the inventor built, the broader class of implementations that embody the same inventive principle, the alternative configurations the inventors considered, and the full range of use cases and applications the technology enables. A thin provisional describes only the specific prototype in the specific configuration the inventor happened to have on hand at the time of filing. The comprehensive provisional supports broad continuation claims directed at how the technology actually gets deployed commercially and at how competitors implement the same inventive concept. The thin provisional supports only claims directed at the specific prototype — giving competitors a roadmap for designing around the patent before it ever issues.

Question: What is a provisional patent application's relationship to an investor NDA — do I need both?

Answer: A provisional patent application and an NDA serve complementary but distinct protective functions — and you typically need both for comprehensive protection before investor conversations. The NDA creates a contractual confidentiality obligation that prevents the specific investor from using or disclosing your confidential technical information. The provisional application establishes a patent priority date that protects your IP rights against all third parties — including third parties the investor might discuss your invention with despite the NDA's obligations. An NDA breach gives you a contract claim against the specific breaching party. A priority date established before any disclosure protects your rights even against parties who developed the same concept independently after your filing date. For investor conversations about technically sophisticated innovations, I advise filing the provisional first, then signing the NDA, then having the conversation — so that both forms of protection are in place simultaneously.

Question: Can a provisional patent application be converted to a PCT application instead of a US non-provisional?

Answer: Yes — a PCT application filed within 12 months of the provisional application's filing date can claim priority to the provisional and serve as the mechanism for entering both US and international prosecution, rather than filing a separate US non-provisional and a PCT application independently. Filing the PCT application within the 12-month provisional priority window effectively extends the international prosecution timeline by 18 months compared to filing national applications directly — giving you the full 30-month PCT window from the original provisional date to make national phase entry decisions. For Austin inventors and companies with international commercial potential, converting provisional to PCT rather than provisional to US non-provisional is often the more strategically efficient path — preserving both US and international options through a single international filing rather than parallel US and PCT filings.

Question: What is a micro entity and do I qualify for reduced USPTO fees on my provisional application?

Answer: Micro entity status provides a 60% reduction in USPTO fees — the largest fee reduction available — for qualifying applicants who meet all four criteria: qualifying as a small entity, not having been named as an inventor on more than four previously filed patent applications, not having gross income in the prior year exceeding three times the median household income as adjusted annually by the USPTO, and not being obligated to assign or license the application to an entity that does not qualify as a micro entity. For individual inventors and very early-stage startups, micro entity status can significantly reduce the government fee component of both provisional and non-provisional filings. I assess micro entity qualification for every new client filing and confirm the applicable fee tier before any USPTO submissions — incorrectly claiming micro entity status when you do not qualify can jeopardize the application.

Question: What is the best way to protect a provisional patent application's confidentiality while also using it to attract co-founders or early employees?

Answer: Sharing provisional patent application content with prospective co-founders or early employees before an attorney-client relationship is established with those individuals creates specific confidentiality risks — they are not covered by your attorney-client privilege and a general NDA may not adequately address the specific IP ownership implications of their potential contributions to the invention during the evaluation period. The right approach involves several coordinated steps: executing a confidentiality and non-use agreement specifically drafted for the co-founder or early employee evaluation context before sharing any substantive technical content; including specific IP assignment provisions addressing any contributions the prospective team member makes to the invention during the evaluation period; and consulting with me about whether the content you need to share for evaluation purposes can be shared at a level of specificity that informs the evaluation without disclosing the full provisional application content. I have helped many Austin founders navigate this specific situation and the right structure depends on the specific technical information being shared and the nature of the prospective relationship.

Question: What is the one-year grace period and how does it interact with my provisional application?

Answer: The US one-year grace period under 35 U.S.C. § 102(b) provides that certain disclosures made within one year before a patent application's effective filing date do not count as prior art against that application — specifically disclosures made by the inventor or obtained from the inventor. A provisional application establishes a priority date that becomes the effective filing date for purposes of this grace period analysis in the subsequent non-provisional or PCT application. This means that your own public disclosures made after your provisional's filing date — within the 12-month provisional window — do not generate prior art against a non-provisional claiming the provisional's priority date as long as those disclosures are of subject matter adequately disclosed in the provisional. Critical caveat: the one-year grace period applies only in the US — international absolute novelty jurisdictions have no grace period for any disclosure before the patent application's filing date. Your PCT application claims the provisional's filing date as its priority date, so disclosures after the provisional filing but before the PCT filing are protected in PCT countries only if they are the inventor's own disclosures within the grace period under each national law — which varies significantly.

Question: How do I handle a situation where two co-inventors disagree about whether to convert the provisional to a non-provisional?

Answer: Disagreements between co-inventors about prosecution strategy — including the decision to convert a provisional to a non-provisional — are more common than most people realize and can create serious problems if not addressed through proper legal channels. Under US patent law, each joint inventor must be named on a patent application, but the ownership of the resulting patent is shared between the inventors — or, more precisely, between the assignees of each inventor's interest. If one inventor wants to abandon the application and the other wants to continue, the patent system does not provide a clear mechanism for one inventor to force the other to cooperate with prosecution. The right approach is to address the governance of prosecution decisions in a written co-inventor or co-ownership agreement executed before the disagreement arises — specifying how prosecution decisions are made, what happens if one party wants to abandon prosecution the other wants to continue, and how prosecution costs are shared. I strongly advise co-inventors to execute a written co-ownership agreement at the time the provisional is filed rather than discovering its absence when a disagreement occurs during the 12-month conversion window.

Question: What happens if my invention changes between the provisional filing and the non-provisional filing?

Answer: Some evolution of the invention between provisional and non-provisional filing is expected and manageable — this is part of why the 12-month window exists. New technical developments added to the non-provisional that were not disclosed in the provisional will receive the non-provisional filing date rather than the provisional's earlier date. For innovations clearly within the scope of what the provisional disclosed, the earlier priority date is preserved. The critical question is whether the most important claim elements in the non-provisional are adequately supported by the provisional's disclosure. I advise clients throughout the 12-month provisional window on what technical developments need documentation and when continuation or new provisional filings might be warranted.

Question: Does patent pending status on my product deter competitors?

Answer: Patent pending status provides some deterrent effect — sophisticated competitors know that practicing a technology with patent pending status creates infringement risk if the patent issues with claims that cover their products. The deterrent effect is stronger for competitors who are aware of your specific application and understand the likely claim scope. However, patent pending is not a guarantee of any specific level of protection — it simply signals that an application is pending. For maximum deterrent effect, patent pending marking should accompany clear communication about the technical innovations you believe to be patentable. I advise clients on strategic use of patent pending marking as part of comprehensive competitive positioning.

Question: Can a provisional patent application ever be used as prior art against me?

Answer: es — your own provisional application, once published or disclosed, can constitute prior art against your subsequent filings in some circumstances. More importantly, a competitor's provisional application — once published as part of the corresponding non-provisional — establishes prior art as of the provisional's filing date. This means a competitor's unpublished provisional filed before your non-provisional can emerge as prior art against your claims even if it was completely unknown to you at the time you filed. This possibility underscores the importance of filing promptly — the earlier your priority date, the less prior art can be established against your claims.

Question: What technical documentation should I provide to help you draft a strong provisional application?

Answer: The more technical detail you can provide, the stronger the provisional will be. Useful documentation includes a written description of the problem your invention solves and why existing solutions are inadequate; a detailed explanation of how your invention works at a technical level, including key components and their interactions; engineering drawings, CAD files, or sketches showing the invention's structure; flowcharts, pseudocode, or diagrams for any software or algorithmic components; test data or experimental results showing the invention's performance; photographs of prototypes or bench test setups, if any exist; a description of alternative embodiments and design variations you've considered; and any prior art references you're already aware of. Even informal materials help — email chains describing the invention's development, lab notebook entries, engineering meeting notes, or rough sketches. I can work with informal documentation and develop it into a comprehensive provisional specification; the more detail you bring to our initial consultation, the stronger the provisional I can draft on your behalf.

Question: Is a provisional application confidential or will competitors be able to see it?

Answer: A provisional application itself is not published by the USPTO and remains confidential for as long as it remains pending — a maximum of 12 months. If you file a non-provisional application claiming priority to the provisional, that non-provisional will publish approximately 18 months after the earliest priority date, at which point the provisional's content becomes accessible through the file wrapper of the published non-provisional application. If you don't file a non-provisional within 12 months, the provisional simply expires and is never published. This confidentiality window is one reason some inventors strategically allow a provisional to expire without converting it — using the 12-month period to preserve trade secret protection for the disclosed technology while assessing commercial viability, and delaying competitors' access to the technical disclosure.

Question: How does a provisional patent application protect me if I share my invention at a trade show?

Answer: A provisional application filed before a trade show demonstration establishes a priority date that predates the public disclosure — preserving US patent rights for 12 months from the trade show date (under the inventor's own disclosure grace period) and, more importantly, establishing a priority date that predates the disclosure for international patent purposes. In absolute novelty jurisdictions, a public disclosure before filing permanently bars international patent rights regardless of any grace period. The provisional's priority date is what preserves international rights — not the 12-month US grace period. Filing the provisional before the trade show, then claiming that priority date in a PCT application filed within 12 months, is the correct approach for protecting international patent rights while making public demonstrations.

Question: How detailed does my invention description need to be for a provisional patent application?

Answer: As detailed as possible — specifically detailed enough to support every claim you intend to pursue in the non-provisional application that follows. The provisional needs to describe not just what your invention does but how it does it, including the specific technical mechanisms, component relationships, operating parameters, and alternative embodiments that constitute the full scope of your inventive concept. Vague high-level descriptions of what the invention accomplishes without explaining how it accomplishes it create provisional applications that fail to support the broad claims you actually want. I ask clients for engineering drawings, CAD files, test data, flowcharts, code snippets, and any other technical documentation that exists — the more specific the better.

Question: What is "patent pending" and when can I start using it?

Answer: Patent pending means a patent application has been filed with the USPTO and is awaiting examination — either a provisional or a non-provisional application. You can legally begin using the patent pending designation on your products and in your marketing materials immediately after your application is filed and you have received a filing confirmation from the USPTO. Using patent pending before an application is filed is illegal and can result in fines. Once your application is filed I provide you with the filing receipt you need to confirm the status that justifies using the designation.

Question: Can I file multiple provisional applications for the same invention as it evolves, and combine them into one non-provisional?

Answer: Yes — this is often the right strategy for inventors whose technology is developing rapidly. You can file successive provisional applications as your invention evolves, each capturing the technical developments made since the previous filing. When you file the non-provisional application within 12 months of the earliest provisional, it can claim priority to all of the provisionals filed within that preceding 12-month period, with each provisional supporting priority for the specific subject matter it disclosed. This multi-provisional strategy gives you the flexibility to continue refining the technology while establishing priority dates for each stage of development — though it does require careful management to ensure every important development is captured in at least one provisional before the non-provisional filing deadline arrives.

Question: What happens if I miss the 12-month deadline to convert my provisional to a non-provisional?

Answer: If you fail to file a non-provisional application within 12 months of your provisional filing date your provisional application expires and you lose the benefit of that priority date. The invention effectively loses its patent pending status and you would need to file a new application — which would receive a new, later filing date. Any public disclosures made between your original provisional filing and the new application date could constitute prior art against the new filing. Provisional applications cannot be revived after the 12-month window closes. I track all provisional deadlines for my clients and provide advance notice before the conversion deadline approaches.

Question: Should I describe every variation and alternative embodiment of my invention in the provisional?

Answer: Absolutely yes — describing alternative embodiments, variations, and different implementations of your inventive concept in the provisional is one of the most important things I focus on during provisional drafting. Every alternative embodiment described in the provisional becomes potential claim scope that you can pursue in the non-provisional. Alternatives not described in the provisional cannot be added to the non-provisional without losing the priority date for that new subject matter. I work with clients to identify and document not just the preferred implementation but the full range of variations that embody the same inventive concept — which is what makes the difference between a thin provisional and a comprehensive one.

Question: Can a provisional patent application protect a software invention?

Answer: Yes — software innovations are protectable through the same provisional filing process as any other invention. A provisional application for a software invention should describe the software architecture, the specific algorithms or processes implemented, the data structures used, the specific technical problem solved, and the technical improvements achieved — with enough detail to support claims that will need to navigate the Alice/Mayo framework during non-provisional examination. Code samples, flowcharts, system architecture diagrams, and API documentation are all useful inputs for a software provisional. The key is describing the specific technical implementation rather than just the functional outcome.

Question: Does filing a provisional patent application give me any rights if someone infringes my invention before the patent issues?

Answer: Limited rights. Under 35 U.S.C. § 154(d) you may be able to recover damages for infringement that occurs after your non-provisional application publishes — typically 18 months after the earliest priority date — if the infringer had actual notice of the published application and the issued patent claims are substantially identical to the published application claims. This provisional rights theory does not apply during the provisional-only period before non-provisional publication. Enforceable patent rights only arise upon grant of the patent, but the priority date established by your provisional protects the scope of those rights against prior art that emerges after your provisional filing date.

Question: How is a provisional patent application different from just writing down my invention and putting it in a sealed envelope?

Answer: Completely different — and the sealed envelope approach provides no legal protection whatsoever. A provisional patent application is a formal USPTO filing that establishes an official government-recorded priority date with legal effect under the patent statute. A sealed envelope is a private document with no legal standing in the patent system. The USPTO filing receipt you receive after filing a provisional is legally meaningful. A dated envelope is not. I regularly speak with inventors who believed they protected themselves by documenting their inventions privately and discovered too late that those informal records provide no defense against a competitor who filed a patent application first.

Question: Can a provisional patent application be used to establish priority against a competitor who files on the same invention?

Answer: Yes — this is one of the primary strategic uses of provisional applications. Under the first-to-file system, the party who files first gets priority. If you file a provisional application before your competitor files any application, your provisional establishes a priority date that predates their filing — and the non-provisional you file within 12 months claims that earlier date. If a competitor files after your provisional but before your non-provisional, your provisional still gives you the earlier priority date as long as your non-provisional is filed within the 12-month window and the claimed subject matter is adequately disclosed in the provisional.

Question: What is the difference between a provisional patent application and a utility patent application?

Answer: A provisional application establishes your priority date and gives you 12 months of patent pending status but is never examined and never becomes a patent on its own — it expires unless you file a non-provisional within 12 months. A non-provisional utility patent application enters formal USPTO examination, goes through prosecution with an examiner, and can result in a granted patent that provides enforceable exclusive rights. The provisional is the first step; the non-provisional is where the patent is actually obtained. The provisional costs less and has fewer formal requirements — no claims are required — but it provides no direct patent protection. It only preserves your ability to later claim that earlier priority date in a non-provisional.

Question: Can I sell or license my invention while my provisional patent application is pending?

Answer: Yes — patent pending status does not restrict your ability to sell, license, manufacture, or commercialize your invention. Many inventors and startups actively seek licensing deals, manufacturing partnerships, and investment while their applications are pending. Patent pending status actually helps these commercial conversations — it signals to potential partners and investors that IP protection is in progress and that infringement risk exists for anyone who copies your innovation without authorization. Just be careful that any agreements you enter during the patent pending period address what happens to the licensing or partnership arrangement when the patent issues.

Question: What should I do if my invention is still being developed when my provisional application expires?

Answer: If your 12-month provisional window is expiring before your invention is fully developed you have a few options. You can file the non-provisional based on what is currently disclosed in the provisional — accepting that any subsequent developments will receive the non-provisional filing date rather than the provisional's priority date. You can file a new provisional application covering the additional developments before the original provisional expires — this gives you an additional 12 months to continue development while the new provisional is pending. Or you can file the non-provisional within 12 months and then file a continuation-in-part application later to add new developments. Which approach is best depends on how significant the pending developments are and what competitive threats exist in your technology space.

Question: What happens if I forgot to include something important in my provisional application?

Answer:  If you realize you omitted important technical aspects from your provisional application, your options depend on timing. If you are still within the 12-month provisional period, you can file a second provisional application covering the omitted subject matter. Both provisionals can be claimed in the subsequent non-provisional. If your non-provisional has already been filed, you can file a continuation-in-part application adding the omitted subject matter — but the new subject matter will receive the CIP filing date, not the original provisional date. Subject matter not described in the original provisional cannot be added retroactively to claim the original priority date. This is why I focus on comprehensive disclosure during provisional drafting — omissions cannot be corrected without some loss of priority date benefit.

Question: Can I file a provisional patent application on an invention I made at my previous employer?

Answer: Not without careful analysis of your employment agreements and the circumstances under which you made the invention. Most technology employment agreements include IP assignment provisions requiring employees to assign inventions made within the scope of employment or using company resources to the employer. Filing a patent application on an invention that belongs to your previous employer could expose you to significant legal liability. Before filing any application on an invention developed during prior employment I strongly recommend having your previous employment agreements reviewed by a qualified attorney to assess your obligations and rights. This analysis should happen before filing — not after.

Question: Do I need to include claims in a provisional patent application?

Answer: No — claims are not required in a provisional patent application, and this is one of the features that makes provisionals faster and less expensive to prepare than non-provisionals. The provisional must include a specification describing the invention in sufficient detail to support the claims you intend to pursue in the non-provisional, and drawings where necessary to understand the invention. However, even though claims are not formally required, I sometimes include a draft set of claims in provisional applications as a planning tool — to ensure the specification is drafted with the right level of technical detail to support the claim scope I anticipate pursuing. These draft claims are not examined and do not limit the claims that can be pursued in the non-provisional.

Question: Should I file a provisional application before a pitch competition or demo day?

Answer: Yes — always file before pitching or demonstrating to any audience, even under NDA. Pitch competitions are public events where your technology is disclosed to judges, other founders, investors, and audience members who may not all be bound by confidentiality obligations. A single public disclosure without prior patent filing permanently destroys international patent rights in absolute novelty jurisdictions. A provisional filed before your pitch establishes a priority date that predates the disclosure, preserving both US and international patent rights. I regularly help Austin startup clients time provisional filings around their fundraising calendar — specifically to ensure that patent applications are on file before pitch competitions, demo days, product launches, and investor presentations.

Question: How quickly can you draft and file a provisional patent application in an urgent situation?

Answer: For truly urgent situations — when a public disclosure deadline is approaching within days — I can work on an accelerated timeline. The speed of provisional drafting depends on how completely the invention is documented and how quickly you can provide the technical information I need. If you have comprehensive engineering documentation ready to share immediately, I can draft and file a provisional within a few days of our initial consultation. If the invention is not yet fully documented and significant drafting from scratch is required, more lead time is needed to produce a thorough provisional rather than a thin one. Contact me as early as possible — the more lead time I have the more comprehensive the provisional will be.

Question: Can a provisional patent application protect an invention that is still just an idea without a working prototype?

Answer: Yes — a working prototype is not required to obtain patent protection. A patent application requires a written description of the invention sufficient to enable someone skilled in the relevant art to make and use it, but it does not require that you have physically built a working version. Many significant patents have been filed on inventions that were never physically prototyped — the patent system's requirement is constructive reduction to practice through adequate written disclosure, not actual physical construction. For complex inventions, this means your provisional needs detailed engineering drawings, technical specifications, and a thorough written description of how the invention works — but it does not need to be accompanied by a physical device or working software implementation.

[ Schedule a Free Consultation ]

Provisional Patent Application Services

Protecting your invention begins with establishing your priority date — and a well-drafted provisional patent application does exactly that.

I offer a free 30-minute phone consultation to discuss your invention, assess its patentability, and determine whether a provisional application is the right first step for your situation.

With a physics degree from the University of Texas at Austin, seven years as a semiconductor manufacturing process engineer specializing in laser lithography, and 17 years of USPTO prosecution experience, I understand your technology at a fundamental level — which means your provisional will be drafted with the technical depth needed to support the broadest possible claims in the non-provisional that follows.

Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or fill out the form to schedule your free consultation. All discussions are confidential under attorney-client privilege. No obligation.

Phone: 512-293-0710

Email: sconnolly@austin-patent-attorney.com

Location: Austin, Texas

Serving Austin, Round Rock, Cedar Park, Georgetown, and all of Central Texas.

USPTO matters are federal — I work with clients throughout Texas and nationwide.

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