Provisional Patent Applications

A provisional patent application is an application that has loosened filing requirements.  That is, it may be filed without formal drawings, a claim, an oath or declaration, or any information disclosure statement.  It simply requires an enabling disclosure of the invention, necessary to understand the invention, a cover sheet (see PTO form SB/16), and a filing fee (see USPTO Current Fee Schedule).  An Application Data Sheet (ADS) may be filed in lieu of a cover sheet (see 37 CFR 1.76 and MPEP § 601.05). 

See Sample Provisional Patent Application.

Uses of the Provisional Patent Application

Since a provisional patent application has loosened filing requirements, it is an efficient and cost-effective patent application to establish a priority date for an invention.  It is a particularly useful patent application when running against a rush filing deadline, such as prior to an impending public disclosure of an invention or a rapidly approaching bar date.  A bar date is the date upon which patent protection is prohibited following the expiration of a grace period.  A grace period is a 12-month period (for utility patent applications) triggered by an event, such as a public disclosure, a public use, a sale or an offer for sale

A provisional patent application may also be used to promptly establish a filing date, such as upon the conception or discovery of a pioneer invention (i.e., an invention that is truly revolutionary) and/or in a race to be the first to file a patent application (i.e., to meet the first-to-file provisions of the America Invents Act, which becomes effective on March 16, 2013). 

Disclosure of the Invention

Once a provisional patent application has been filed, the applicant may disclose the invention without risking loss of priority.  This allows the applicant to raise funding for further developing the invention or for filing a non-provisional patent application.

As a word of caution, developments or improvements in the invention by third parties gleaned from a disclosure of the invention may not be protected by the provisional patent application.  So, care should be taken when making disclosures.  If possible, it may be advisable to secure a non-disclosure agreement (see Sample Non-Disclosure Agreement) prior to disclosing the invention. 

Product Testing

During the pendency of the provisional patent application, the inventor or applicant may test the viability of the invention and the acceptance of the invention in the marketplace, and may further develop or improve the invention

Improvements

Bear in mind that the provisional patent application only serves to provide a filing date for the subject matter in the application.  Further developments and improvements in the invention may warrant the filing of one or more subsequent provisional patent applications to establish filing dates for the developments and improvements.  This will become particularly important for meeting the first-to-file provisions of the America Invents Act.

Enabling Disclosure Requirements

The written description of a provisional patent application has to provide an “enabling disclosure.” That is to say, the written description has to enable one of ordinary skill in the art of the invention to make and use the invention.  If the disclosure is non-enabling, the provisional patent application will be defective in establishing a filing date for the invention.

New Matter

If something is missing from the provisional patent application, it may be the subject matter of an additional subsequent provisional patent application.  Alternatively, new matter may be later added to a later filed non-provisional patent application claiming benefit to the provisional patent application.  However, the new matter will not receive the benefit of the filing date of the provisional patent application.  So, care must be taken to insure that the provisional patent application meets the “enabling” disclosure requirement.

Expiration

It is important to note that a provisional patent application expires within 12 months from its filing date.  This period is not extendable

Limitations

A provisional patent application does not mature into a patent.  Instead, it requires the subsequent filing of or conversion to a non-provisional patent application within 12 months of its filing date

If an invention is used or on sale during the 12-month pendency period, the applicant may lose the right to patent the invention if the 12-month pendency period expires before a corresponding non-provisional patent application is filed.

A provisional patent application may not be filed for design inventions.  It cannot claim the benefit of a previously-filed application, either foreign or domestic, including another provisional patent application

Important Notes

The filing of a provisional patent application establishes a Paris Convention priority date (see Foreign Patent Applications page).  That is to say, any foreign application relating back to a provisional patent application must be filed within the 12-month pendency period of the provisional patent application (i.e., prior to the expiration of the provisional patent application).

It is also instructive to note that the term of a non-provisional patent application claiming priority to a provisional patent application is 20 years, measured from the filing date of the non-provisional application, barring any patent term adjustment, in accordance with 35 USC 154, for delays in patent prosecution caused by the USPTO.  The term is not measured from the filing date of the provisional patent application. 

Additionally, it should be noted that a provisional patent application is not published.  So, it cannot become prior art against a later filed application

If you have a question about provisional patent applications, askme at thedford@askmeip.com