Understanding Provisional Patent Applications

Why do provisional patent applications only last one year? Why do they exist?

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According to some schools of inventing a provisional patent application is a low-cost alternative or a preliminary step before filing for a non-provisional patent that gives one additional year of protection or grace - maybe enough time to test market your invention before investing in the cost of a regular patent.

There are advantages and disadvantages to a provisional patent application - learn about them before making your decision.

A provisional patent application should always be as complete as possible as compared to a non-provisional patent application, however, you will not need to file any claims.

History of Provisional Patent Applications

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.

The lifetime of a U.S. Patent is now twenty years from its effective filing date, but a foreign applicant for a U.S. patent could in effect have twenty-one years of patent protection - if they file a home country patent application and then file a U.S. patent application at the of a one year time period - claiming priority with their home country application.

(Note: You can also file for a provisional patent if you are a foreign applicant - but that would not increase protection beyond twenty-one years.)

What Is A Provisional Patent Application?

A provisional patent application allows filing without any formal patent claims, oath or declaration, or any information disclosure (prior art) statement (1).
It provides the means to establish an early effective filing date in a non-provisional patent application (2). It also allows the term "Patent Pending" to be applied.

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 (3) 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 (4) 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.

Patent Laws References

  1. Patent Law 35 U.S.C. §111(b)
  2. Patent Law 35 U.S.C. §111(a)
  3. Patent Law 35 U.S.C. §119(e)
  4. Patent Law 35 U.S.C. §1.53(c)

Continue >> Advantages Of A Provisional Patent or Disadvantages Of A Provisional Patent

  • A provisionl provides simplified filing with a lower initial cost 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;
  • A provisional patent establishes an official United States patent application filing date for the invention;
  • A provisional patent permits one year’s authorization to use "Patent Pending" notice in connection with the invention;
  • A provisional patent begins the Paris Convention priority year;
  • A provisional patent enables immediate commercial promotion of the invention with greater security against having the invention stolen;
  • A provisional patent preserves application in confidence without publication in accordance with patent law (1) ;
  • A provisional patent permits the applicant to obtain USPTO certified copies;
  • A provisional patent allows for the filing of multiple provisional applications for patent and for consolidating them in a single non-provisional application for patent (2) ;
  • A provisional patent provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).

Patent Laws References

  1. Patent Law 35 122(b)
  2. Patent Law 35 U.S.C. §111(a)

Continue >> Disadvantages Of A Provisional Patent

  • 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 in order to preserve any benefit from the provisional-application filing.
  • Beware that an applicant whose invention is "in use" or "on sale" (1) in the United States during the one-year provisional application pendency period may lose more than the benefit of the provisional patent 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 (2).
  • A claim (3) 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 (4).
  • 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.

    Patent Laws References

    1. Patent Law 35 U.S.C. §102(b)
    2. Patent Law 35 U.S.C. §102(b)
    3. Patent Law 35 U.S.C. 119(e)
    4. Patent Rule 37 CFR 1.78