3/2/2010
by: Joseph Page
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Provisional Application

A 'placeholder' for one year

Provisional Application
Related Topics: Patent Application , Non-Disclosure Agreement , Derivative Hearing , Statutory Invention Registration , Problems , Rolling Provisional

 

Provisional Patent Application
According to some, a provisional patent application may be used as a low-cost alternative or a preliminary step before filing for a so called ‘non-provisional’ or full and complete patent application. Filing in this way gives one additional year of protection or grace. Furthermore, this filing strategy may provide you with enough time to test market your invention before incurring very substantial attorney fees of a regular patent – while you are not required to use an attorney or agent for a regular patent, they are complex and sometime difficult for non-experts to prepare well.
There are advantages and disadvantages to a provisional patent application – you are encouraged to learn about them before making your decision regarding a filing strategy. A provisional patent application should always be as complete as possible. Leaving matter out of your provisional application tends to make the coverage it might otherwise provide weaker. While you will not be required to prepare patent claims (most difficult to draft well) with the provisional patent application, the non-provisional application will require at least one claim. A provisional patent application always expires at its 12 month anniversary – and never becomes a patent. Only when you file a non-provisional based upon a earlier filed provisional will a ‘patent’ finally result.
Provisional Patent Applications Beginnings
Since June 8, 1995, the United States Patent and Trademark Office or USPTO has offered inventors the option of filing a provisional application for utility patents. This provided a lower-cost first patent filing in the United States and gave United States based applicants parity with other applicants under the GATT Uruguay Round Agreements. While the program has benefits and pitfalls, it remains popular and often used process to precede a normal patent filing.

What Is A Provisional Patent Application?
A provisional patent application allows an inventor to describe her/his idea without any formal patent format, without claims, without a sworn declaration, or any information about previous inventions of others (i.e. prior art) statement. It provides means to establish an early effective filing date to be conveyed to a non-provisional patent application. In another benefit, one may use the term "Patent Pending" which can have some marketing and business strategy advantages.
How To File
There are no official USPTO forms or electronic filing available for a provisional patent. Parts of the application will need to be written by you or by a professional and you will need to accompany the application with a "provisional cover sheet" and a "fee transmittal form", which are USPTO provided.
How Long Does A Provisional Patent Application Last - And Then What Happens
A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. The corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.
Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition requesting such a conversion within 12 months of the provisional application filing date.
However, converting a provisional application to a non-provisional application (versus filing a non-provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. (You lose the bonus year - conversions are not that common - most inventors file an application for a regular patent within one year.)
By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.

Additional information from the United States Patent Office follows.
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Under the provisions of 35 U.S.C. § 119(e) , the corresponding non-provisional application would benefit in three ways: (1) patentability would be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and (3) the twenty-year patent term would be measured from the later non-provisional application filing date. Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term. Inventors may file U.S. provisional applications regardless of citizenship. Note that provisional applications cannot claim the benefit of a previously filed application, either foreign or domestic. Note also that 35 U.S.C. § 112 must be complied with as discussed in the paragraph below in order to receive the benefit under 35 U.S.C. § 119(e) .
The later-filed non-provisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter, which the applicant regards as the invention. See 35 U.S.C. § 112 , 2nd paragraph. Although a claim is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application. There is no requirement that the written description and any drawings filed in a provisional application and a later-filed non-provisional application be identical, however, the later-filed non-provisional application is only entitled to the benefit of the common subject matter disclosed in the corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. See 35 U.S.C. § 112 , 1st paragraph.
A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. § 111(b) . It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later-filed non-provisional patent application filed under 35 U.S.C. § 111(a) . It also allows the term "Patent Pending" to be applied in connection with the description of the invention.
A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. § 119(e) , the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application within the time period and in the manner required by 37 CFR 1.78.
Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition under 37 CFR § 1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.
However, converting a provisional application to a non-provisional application (versus filing a non-provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application.
By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.
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Provisional Application for Patent Filing Date Requirements
The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)
A filing date will be accorded to a provisional application only when it contains:

  • a written description of the invention, complying with all requirements of 35 U.S.C. §112 1 st paragraph and
  • any drawings necessary to understand the invention, complying with 35 U.S.C. §113 .

If either of these items are missing or incomplete, no filing date will be accorded to the provisional application.
To be complete, a provisional application must also include the filing fee and a cover sheet identifying:

  • the application as a provisional application for patent;
  • the name(s) of all inventors;
  • inventor residence(s);
  • title of the invention;
  • name and registration number of attorney or agent and docket number (if applicable);
  • correspondence address; and
  • any US Government agency that has a property interest in the application.

Form PTO/SB/16, available on the printable forms page of the USPTO website at http://www.uspto.gov/web/forms/index.xml may be used as the cover sheet for a provisional application.
Filing Fee
Fees are subject to change. The current fee for a provisional application for patent can be found on the fee page . USPTO Contact Center (UCC) customer service representatives are available Monday through Friday (except Federal holidays) at 800-786-9199 to provide fee information. Payment by check or money order must be made payable to "Director of the U.S. Patent and Trademark Office".
Mail the provisional application and filing fee to:
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450

This information is general in nature and is not meant to substitute for advice provided by a patent practitioner. Applicants unfamiliar with the requirements of US patent law and procedures should consult an attorney or for example, Integrity Intellectual Property registered to practice before the USPTO.

Copyright IIP 2011
Comments on the patent topic: Provisional Application
Provisional patents are a good start, but they are no substitution for the real thing.  File early, file often, then follow-up with a full application.
Patent Help
1/25/2012 11:19:37 AM
LostInvent
11/21/2011
Can I get two provisionals for the same thing? I want to file a new provisional for every improvement I make as I go along.
I want to patent my lifts - we make very unique new systems - but we are not finished with our designs yet. I like to use provisionals to put in place holders until this design is more firm.
LiftBrad
8/8/2011
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Patent Services Header Intellectual Property Patent Agent, patent attorney, patent law Patent Topic: "Provisional Application" Patent Attorney Invention HOME IP Tip: #9
Since patents are quite similar from nation to nation, it is possible to file a single patent application with the Patent Cooperation Treaty guidelines and prosecute the application singly in the first few years.  After the application matures, the application is granted at each national patent office.  In this way, it is possible to save a considerable amount of money avoiding patent development fees at every nation.  Because patent principles such as 'obviousness' and 'inventive step' have different standards, a PCT application should account for each of these. Patent Attorney, Patent law Patent Cooperation Treaty
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