Patent Law Articles Kalamazoo Patent Attorney: Understanding Provisional Patent Applications
Kalamazoo Patent Attorney: Understanding Provisional Patent Applications

Understanding the Provisional Patent Application

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional patent application. The provisional patent application was initially designed as a  lower-cost first patent filing in the United States. Additionally, it gives U.S. applicants an equal footing with foreign applicants under the General Agreement on Tariffs and Trade Uruguay Round Agreements (GATT-URA).

A provisional application is an application for patent filed in the USPTO under 35 U.S.C. §111(b). It require formal patent claims, an oath or a declaration, nor 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.

The fact that several of the formal requirements for a non-provisional (20 year) patent application are not required in a provisional application does not mean that they should not be considered when drafting a provisional application. Far too many researchers and inventors file a provisional patent application without identifying the closest prior art and exactly what they will be claiming as their invention or discovery. Every patent issued over the past two-hundred years cites prior art. It is imperative to know what that prior art is prior to drafting the provisional application. Additionally, bear in mind that the scope of a patent’s protection is judged by its claims, not by its description. Remember, you cannot materially change the description in the provisional patent application when drafting the subsequent non-provisional patent application.

A 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 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 petition requesting such a conversion within 12 months of the provisional application filing date.

Bear in mind, converting a provisional application into 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 may be extended by as much as 12 months.

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, whichever occurs first. While these pre-filing disclosures will not bar a United States application, they may preclude patenting in some foreign countries.

A filing date will be accorded to a provisional application only when it contains a complying written description of the invention, and any drawings necessary to understand the invention. 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 stating the following six pieces of information:

1.    the application as a provisional application for patent;
2.    the name(s) of all inventors;
3.    inventor residence(s);
4.    title of the invention;
5.    name and registration number of attorney or agent and docket number (if applicable);
correspondence address; and
6.    any U.S. Government agency that has a property interest in the application.

Listed below are some additional facts regarding provisional patent applications:
1.    Provisional applications for patent may not be filed for design inventions;
2.    Provisional applications are not examined on their merits;
3.    Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic;
4.    It is recommended that the disclosure of the invention in the provisional application be as complete as possible;
5.    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;
6.    If there are multiple inventors, each inventor must be named in the application;
7.    All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application;
8.    The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date;
9.    A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application;
10.    There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application;
11.    Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations; and
12.    No information disclosure statement may be filed in a provisional application.

A provisional application automatically becomes abandoned when its pendency period expires 12 months after the provisional application filing date by operation of law. An applicant must file a non-provisional application claiming benefit of the earlier provisional application filing date in the patent office before the provisional application expires in order to preserve any benefit from the provisional application filing.

An applicant whose invention is in use or on sale in the United States during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may lose the right to ever patent the invention.

Remember, a provisional application will not mature into a granted patent without further submissions by the inventor. All too often, invention promotion companies misuse the provisional application process leaving the inventor with no patent.