Understanding the Provisional Patent Application
A United States provisional patent application is a simplified, lesser-cost United States patent application filed with the United States Patent and Trademark Office (USPTO) to obtain provisional patent rights.
A provisional patent application allows an inventor to obtain an official filing date from the USPTO without a formal patent claim, oath or declaration, or any prior art disclosure statement. The provisional patent application does not have to be filed in the English language.
Accordingly, preparing and filing a United States provisional patent application can be relatively inexpensive in comparison to a non-provisional patent application.
Know the Advantages.
By filing a United States provisional patent application with the USPTO, an inventor is afforded certain benefits from the filing date.
- The inventor can use the term “Patent Pending” on or in connection with the invention during the 12 months following the date of filing with the USPTO.
- A subsequently filed regular non-provisional patent can be treated as a prior art reference against other patent applications of competitors as of the earlier provisional patent application filing date.
- By filing a provisional patent application first and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application period, the patent-term endpoint may be extended by as much as 12 months.
- When filed before publication of an article about the invention, the right to file patent applications for a grant of patent can be preserved, especially in foreign countries, which do not allow patent applications to be filed subsequent to invention disclosure.
- The provisional patent application is held secret until cited in a subsequent regular non-provisional patent application.
- The provisional patent rights afforded to an inventor upon filing of a United States provisional patent application with the USPTO allow immediate commercial promotion of the invention with greater security against having the invention stolen while commercial markets are tested.
- Additionally, the 12-month application period allows the inventor time to further develop the invention or to resolve problems prior to filing a regular United States non-provisional or foreign patent application. Also, because United States provisional patent applications are not examined, the costs of prosecuting the patent application are delayed.
Know the Disadvantages.
- Importantly, the inventor should understand that a United States provisional patent application will not be examined by the USPTO and cannot mature into a granted patent without further submission of a regular non-provisional patent application by the inventor. However, the specification description and drawings of a provisional patent application must still satisfy the same statutory disclosure requirements as a non-provisional patent application. If a provisional patent application inadequately discloses the invention, a subsequently filed non-provisional application may not be accorded the priority date of the provisional filing date.
- Additionally, a provisional patent application only has a 12-month life subsequent to the provisional application filing date. The provisional patent application automatically expires 12 months after the provisional application filing date by operation of law. The inventor must file a regular non-provisional application claiming benefit of the earlier provisional application filing date in the PTO or in any foreign country in which patent rights are to be obtained before the United States provisional application period expires to preserve any benefit from the provisional application filing. If the 12-month provisional application period expires before a corresponding non-provisional application is filed, the inventor will lose the right to the benefit of the provisional patent application filing date.
- Inventors should beware that if the invention is "in use" or "on sale" in the United States during the 12-month provisional application period and the 12-month provisional application period expires before a corresponding non-provisional patent application is filed, the inventor may lose the right to file a non-provisional patent application in the United States and in foreign countries and obtain patent protection.