PROVISIONAL PATENT APPLICATION

Q: What is a Provisional Patent Application? Why might it be good for me or my company?

A: On June 8, 1995, the United States implemented certain provisions in accord with the General Agreement on Tariffs and Trade (GATT) Uruguay Round Agreements. Applicants and inventors filing in the United States now have the option of filing a provisional application for patent. The provisional patent application was intended to provide a less expensive vehicle for entry into the United States patent system, and to give patent applicants equivalent treatment under U.S. law as was given to foreign applicants under the laws of other countries.

A provisional patent application provides a more simplified series of requirements for effectuating a first patent filing. It allows the filing of an application at a lower filing fee, without a formal patent claim, without formal patent illustrations, an oath/ declaration, or an Information Disclosure Statement. Advantageously, the provisional patent application provides a mechanism for claiming an earlier effective filing date in a non-provisional patent application. The filing of a provisional patent application provides the inventor with the right to use the term, "Patent Pending," while still preserving the application in secrecy.

A provisional patent application lasts only twelve (12) months from the date the provisional application is filed, and is non-extendable and non-renewable. Accordingly, the applicant must file a corresponding non-provisional patent application during the 12-month period of provisional application pendency in order to claim the benefit of the earlier filed provisional application.

Advantageously, however, the provisional patent application provides a simplified filing with a lower initial investment, while giving up to 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. The provisional patent application, then, enables immediate commercialization of the invention, with greater security against having the invention stolen.

Another significant advantage of the provisional application is provided by virtue of the fact that a non-provisional patent application cannot be amended to add new subject matter. New matter may only be introduced into a non-provisional patent application at significant expense to the applicant, and requires the meeting of rigorous procedural requirements. Often, this results in the loss of a significant amount of time in the patent prosecution phase, and results in an issued patent with a shorter useful life. On the other hand, successive, cost-effective provisional patent applications may be filed with incremental additions and modifications to the initially disclosed subject matter. This allows for the filing of multiple provisional applications for patent and for subsequently consolidating them into a single non-provisional application for patent, so long as the non-provisional application is filed within 12 months from the earliest filed provisional patent application.

Although, under current U.S. law, a patent resulting from a newly filed non-provisional patent application will have a nominal term of twenty years from its filing date (subject to the payment of maintenance fees and any applicable patent term extension provisions), the period of pendency of the provisional patent application is not included within that period. Accordingly, by filing a provisional application first, the end of the term of a patent resulting from a non-provisional application claiming benefit of an earlier filed provisional patent may be extended by up to 12 months.

Caveats

• Provisional applications are not examined on their merits and cannot directly result in an issued patent.
• The benefits of the provisional application cannot be claimed if the one-year deadline for filing a non-provisional application has expired. Accordingly, a provisional application automatically becomes abandoned by operation of law 12 months after the provisional application filing date.
• Because of the provisions of United States law regarding the "on sale bar," one may lose the right to ever obtain a patent if the invention disclosed in the provisional patent application was commercialized more than one year prior to the filing of a non-provisional patent under circumstances wherein the intervening provisional patent application was allowed to become abandoned.
• Provisional applications cannot claim the benefit of a previously-filed application.
• 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.
• If there are multiple inventors, each inventor must be named in the application.
• The non-provisional application must have one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
• Provisional applications for patent may not be filed for design inventions.
• Subject matter amendments are not permitted in provisional applications after filing (but the filing of multiple provisional applications containing further subject matter disclosures are permitted).
• No information disclosure statement may be filed in a provisional application.

Please call upon us if you have any questions regarding the filing, benefits, or law regarding provisional patent applications.