TIP OF THE MONTH - Provisional Patent Applications:
What are they? How do they help me ?
Since June 8, 1995, the United States Patent and Trademark Office (USPTO)
has offered inventors the option of filing a provisional application which was designed to provide a lower-cost mechanism to establish a priority date.
A provisional application allows a patent application to be filed with
the USPTO 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 for a future filed non-provisional application.
The filing of a provisional application also allows the term "Patent Pending" to
be applied to the invention disclosed in the provisional application.
A provisional application has a pendency lasting 12 months from the filing
date of the provisional application. The 12-month pendency period
cannot be extended. Therefore, an applicant who files a provisional application
must file a corresponding non-provisional application within 12 months of
the filing date 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.
Provisional Application Features
- Provides simplified filing with a lower initial investment with one
full year to assess the invention’s commercial potential before
committing to the higher cost of filing and prosecuting a non-provisional
application for patent;
- Establishes an official United States patent application filing date
for the invention;
- Permits one year’s authorization to use "Patent Pending" notice
in connection with the invention;
- Begins the Paris Convention priority year;
- Enables immediate commercial promotion of the invention
with greater security against having the invention stolen;
- Preserves application in confidence without publication in accordance
with 35 U.S.C. 122(b);
- Permits applicant to obtain USPTO certified copies;
- Allows for the filing of multiple provisional applications for patent
and for consolidating them in a single §111(a) non-provisional application
for patent;
- Provides for submission of additional inventor names by
petition if omission occurred without deceptive intent (deletions
are also possible by petition).
Provisional Application Cautions
- Provisional applications are not examined on their merits.
- The benefits of the provisional application cannot be claimed if the
one-year deadline for filing a non-provisional application has expired.
- Provisional applications cannot claim the benefit
of a previously-filed application, either foreign or domestic.
- A second provisional application cannot be filed to extend the
one-year deadline of a first provisional application.
- The disclosure of the invention in the provisional application
must be as complete as possible. In order to obtain the benefit
of the filing date of a provisional application the claimed subject matter
in the later filed non-provisional application
must have support in the provisional application.
- If there are multiple inventors, each inventor must be named in the
application.
- The inventor(s) named in the provisional application must have made
a contribution to the invention as described. If multiple inventors are
named, each inventor named must have made
a contribution individually or jointly to the subject matter
disclosed in the application.
- The non-provisional application must have one inventor in common with
the inventor(s) named in the provisional application to claim benefit
of the provisional application filing date.
- A provisional application must be entitled to a filing date and include
the basic provisional application filing fee in order for a non-provisional
application to claim benefit of that provisional
application.
- There is a surcharge for filing the basic provisional application filing
fee or the cover sheet on a date later than filing the provisional application.
- Provisional applications for patent may not be filed for design inventions.
- Amendments are not permitted in provisional applications after filing,
other than those to make the provisional application comply with applicable
regulations.
- No information disclosure statement may be filed in a provisional application.
- A provisional application cannot itself result in a U. S. patent; however,
a corresponding non-provisional application for patent filed within 12
months of the
provisional application filing date and claiming the benefit
of the earlier filed provisional application may result in a U.S. patent.
Abandonment Caution
A provisional application automatically becomes abandoned when its pendency
expires 12 months after the provisional application filing date by operation
of law. Applicants must file a non-provisional application claiming benefit
of the earlier provisional application filing date in the USPTO before the
provisional application pendency period expires if it is desired to preserve
any benefit from the provisional-application filing.
In summary, provisional applications are a valuable tool for inventors
to obtain an initial filing date with the USPTO. Inventors should fully
understand
that a provisional application will not mature into a granted patent
without the further filing of a non-provisional application by the inventor.
Accordingly,
inventors should be informed with the facts prior to responding to
advertisements that promise “patent protection” for less than
the filing fee of a non-provisional application.
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