Provisional Patent Applications

(Author: Eugene R. Quinn, Jr. | Article Views: 13 | Word Count: 686 | Published: Sep 4th 2007)

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Since June 8, 1995, the United States Patent and Trademark Office has offered inventors the option of filing what is called a provisional patent application. This type of patent application provides a lower-cost first patent filing, which makes it possible for inventors to start the patent process and lock in their rights with less money up front.

A provisional patent application has fewer formalities than are required for the filing of a nonprovisional patent application (which is sometimes simply referred to as a patent application). Specifically, when you file a provisional application there is no need to provide a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. The beauty of the provisional application is that it locks in your priority date. In other words, your filing date for any later filed non-provisional application will be that of the provisional application. Additionally, filing a provisional patent allows the term "Patent Pending" to be applied, which can have significant marketing advantages. I am a big fan of provisional patent applications, particularly for individuals or small businesses. For what it is worth, for my own inventions I always start with a provisional patent application.

While a provisional patent application is a very good first filing, it is important to understand the limitations. A provisional patent application for patent lasts only 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 (i.e., "regular patent application") during the 12-month pendency period of the provisional application in order to benefit from the earlier filing 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. This is because the patent term will expire 20 years from the filing date of the non-provisional (i.e., "regular") application. The importance of this is that you can lock in your priority date with the provisional, apply "Patent Pending", and wait 12 months before you file the non-provisional application. The effect is that you have locked in your priority date for 12 months without the patent exclusivity term beginning to run, and by paying only a fraction of what it would cost to prepare and file a regular patent application.

While a claim is not required in a provisional application, the written description and any patent drawings 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. In order to do this it will be necessary to describe the manner and process of making and using the invention in full, clear and exact terms so as others to make and use the invention. It will also be necessary to set forth the best mode contemplated for carrying out the invention, which means you must disclose any preferences you have, if you have any.

As discussed above, provisional patent applications tend to be cheaper to prepare because less attorney time is required, and the U.S. government filing fee is only $100, which saves you $400 just on the fees due at the time of filing a non-provisional patent application. Furthermore, the Patent Office will not do anything with the provisional until you file a regular patent application claiming the priority of the provisional. This means no more PTO fees and no additional attorneys fees.

In my judgment the benefits provided by a provisional filing are enormous. Critical to remember, however, is that a carelessly prepared provisional is a waste of time and money.

About the Author

Gene Quinn is a Patent Attorney, Law Professor and the Founder of IPWatchdog.com, which is decidated to providing free and reliable information on all intellectual property topics. Gene also teaches a patent bar review course, writes a monthly column for Patent World magazine, and is the lead contributing author for the PLI Patent Practice Center, which is an online patent forum and blog.

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