Provisional application

Under United States patent law, a provisional application for patent is a type of national application for patent filed in the United States Patent and Trademark Office (USPTO), but which does not mature into an issued patent unless further steps are taken by the applicant.

It is a patent application with a specification, i.e. a description, and optional drawing(s) of an invention, but does not require a formal patent claims, inventors' oaths or declarations, or any information disclosure statement (IDS). Furthermore, because no examination of the patentability of the application in view of the prior art is performed, the USPTO fee for filing a provisional patent application is significantly lower than the fee required to file a standard non-provisional patent application. A provisional patent application can establish an early effective filing date in one or more continuing patent applications later claiming the priority date of an invention disclosed in earlier provisional applications by one or more of the same inventors.

The same term is used in past and current patent laws of other countries with different meanings.

Characteristics

The earliest filing date of a "provisional" (application) may be very important where, for example, a statutory condition of patentability is about to expire and there is insufficient time to generate a complete non-provisional application. In many cases, a provisional is filed the same day as a public disclosure of the invention, which disclosure could otherwise permanently jeopardize the patentability in non-US countries having strict requirements on "complete or absolute novelty." In other cases the provisional application is filed soon after such a disclosure in order to preserve only the inventor's U.S. patent rights.

The date of filing of the provisional patent application can also be used as the foreign priority date for applications filed in countries other than the United States and for an international application, but not for a design patent. The filing of a provisional application triggers a review period for the U.S. license necessary for the subsequent foreign or international filings. Though the "provisional" need not be submitted in English, a translation will be required when (and if) a non-provisional application claims the benefit of the provisional.

A provisional application, as such, is never examined by the USPTO, and therefore can never become a patent. It is also not "published", but will become a part of any later non-provisional application file that references it, and thus becomes "public" upon issuance of a patent claiming its priority benefit.

A "provisional" is automatically abandoned (expires) one year after it is filed. The provisional filing date is not counted as part of the 20-year life of any patent that may issue with a claim to the provisional filing date.

Procedure and benefits

To obtain the benefit of the "provisional" filing date, a non-provisional patent application must be filed, claiming benefit of the filing date of one or more specific provisional patent applications, [cite web | title =37 C.F.R. 1.78(a)(4) | url =http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_78.htm#cfr37s1.78 | accessdate = 2007-09-01] prior to their expiration.

The provisional patent application is only pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application claiming the benefit of the provisional application must be done within 12 months. Otherwise, the rights to claim the benefit of provisional application are lost. [cite web | title =35 U.S.C. 111(b)(5) | url =http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_111.htm#usc35s111 | accessdate = 2007-09-01]

Such non-provisional application also must name at least one inventor common to those named in the "provisionals", and must claim the inventor's invention as disclosed in the "provisionals".

If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases). [ For the purpose of claiming the priority of a subsequent provisional application (e.g. a second provisional application) in a PCT application or foreign (non-US ) application under the Paris Convention, the filing of the subsequent provisional application will only be the starting date of another valid priority year if, at the time of filing the subsequent provisional application, the first provisional application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it (the first provisional application) has not yet served as a basis for claiming a right of priority. The first provisional application may not thereafter serve as a basis for claiming a right of priority. See [http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P83_6610 Article 4 C. (4) of the Paris Convention] .] However, the original priority date of any expired provisional applications will be forfeited.

The provisional priority date is of little consequence for any claims in the issued patent that are not supported by the disclosure in the priority document. This makes it very important that provisional applications be sufficiently detailed. Otherwise, the validity of an issued patent may be challenged as to the priority date of its claims that purport to relate back to an insufficient "provisional". Furthermore, during the year after filing the first provisional (and prior to filing a non-provisional application), it may be useful to file additional provisional applications as improvements are made, and then claim priority of those found useful in drafting the non-provisional application(s).

One popular use of a provisional application is to document and "lock in" potential patent rights while attempting to obtain sponsors for further development (and for more expensive patent applications). This tactic may permit an inventor to defer major patent application costs until the commercial viability (or futility) of the invention becomes apparent. However, wise investors consider provisional applications in view of the long road to potential patentability, not to mention the limitations that may be defined by the prior art.

The advantages of a provisional patent application are:
* ease of preparation,
* cost
* and the ability to use the term "patent pending," which can only be legally used when a patent application has been filed, and which may have significant marketing advantages. [cite web
title =Provisional Patent Applications
url =http://www.ipwatchdog.com/provisional_patents.html
accessdate = 2007-09-01"The importance of this is that you can lock in your priority filing date with the provisional application, while at the same time you are apply to apply the coveted term "Patent Pending" to your invention and/or products. This is important because you cannot use the term "patent pending" or "patent applied" legally in the U.S. unless you do actually have some kind of a patent application on file with the Patent Office."]

The filing fee (as of 2007, the USPTO small-entity filing fee is $105 for provisional patent applications having 100 or fewer pages of specification and drawings) and complexity involved for a provisional patent on the part of both the applicant and the USPTO is generally much less than that of a non-provisional patent application. Thus, it is possible to file a provisional patent application more quickly and cheaply than a non-provisional patent application.

It is also possible to convert a non-provisional application into a provisional, under limited circumstances (e.g., within a year of filing, when the applicant discovers a reason not to pursue the present non-provisional application).

Notes

See also

* Continuing patent application
* Provisional rights
* Patent pending

External links

* [http://www.uspto.gov/web/offices/pac/provapp.htm Provisional Application for Patent] at the USPTO.