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Provisional Application for PatentBackgroundSince 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 and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements. 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 non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term "Patent Pending" to be applied. 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. 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. The later-filed nonprovisional 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 nonprovisional application in order 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 nonprovisional application. 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. Provisional Application for Patent Filing Date RequirementsThe provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to one year 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:
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 as set forth in 37 C. F. R. 1.16(k) and a cover sheet identifying:
Cover Sheet: Form PTO/SB/16, available on the printable forms page of the USPTO website at www.uspto.gov/web/forms/sb0016.pdf, may be used as the cover sheet for a provisional application. 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 agent registered to practice before the USPTO. A list of attorneys and agents can be searched at the USPTO Web site at www.uspto.gov and examined without charge at Patent and Trademark Depository Libraries (PTDLs). A printed list is available from the US Government Printing Office at: Superintendent of Documents (SuDocs) For information or to order by telephone call 202-512-1800. The SuDocs Web site is at www.gpoaccess.gov/index.html. Cautions
FeeFees are subject to change annually. The current fee for a provisional application for patent can be found on the fee page (see 37 CFR 1.16(k)). USPTO Contact Center Division (UCCD) 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 "Commissioner for Patents". Mail the provisional application and filing fee to: Commissioner for Patents Features
WarningsA 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 in order to preserve any benefit from the provisional-application filing. Beware that an applicant whose invention is "in use" or "on sale" (see 35 U.S.C. §102(b)) in the United States during the one-year provisional-application pendency period may lose more than the benefit of the provisional application filing date if the one-year provisional-application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. §102(b)). Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000. Independent inventors should fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent. ContactsThe Inventors Assistance Center (IAC) provides patent information and services to the public. The IAC is staffed by former Supervisory Patent Examiners and experienced Primary Examiners who answer general questions concerning patent examining policy and procedure. Send e-mail to: independentinventor@uspto.gov. For additional copies of this brochure, or for further information, contact the USPTO Contact Center. Direct questions regarding general patent information to the USPTO Information Line and Inventors Assistance Center. Telephone: Toll- Free 800-PTO-9199 (800-786-9199);
Local 703- 308-4357 Direct questions regarding regulations or procedures to the Office of Patent Legal Administration (OPLA). Telephone: 703-308-6906 Direct questions regarding legislative changes to the Office of Legislative and International Affairs. Telephone: 703-305-9300 |
The Inventors Assistance Center is available to help you on patent matters.Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov. While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website. |
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