Provisional Patent Application: The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing the provisional patent application. I’ll explain what it is, what to know before filing, and why it is an important tool during the development of an invention.

What a Provisional Patent Application is:

A provisional patent application, as the name implies, is a patent application that is provisional, i.e. it is temporary. It is also not examined by the United States Patent and Trademark Office (USPTO) and never becomes a patent itself. Instead of being examined and granted as a patent, a provisional patent application is essentially a placeholder that can secure a filing date and patent pending status.

The provisional application expires one year from the date it is filed. Before the one-year expiration deadline, a non-provisional application should be filed claiming the benefit of the provisional application filing date. When a non-provisional application claims the benefit of (also known as ‘claims priority to’) the provisional application, this action allows the non-provisional application to claim the earlier filing date as its own. This way, even if a non-provisional application is filed a year after the provisional, its official filing date is the same as the filing date of the provisional application.

What to Know Before Filing:

The USPTO requirements and fees for filing a provisional application are minimal compared to the requirements and fees associated with a formal non-provisional application. This influences some inventors to start the process with a provisional application. The temptation is for an inventor to draft their own application or potentially worse, invest in a low-cost and equally low-quality application. It may seem like there are no consequences to filing a deficient provisional application because the application is not examined, but in reality, all rights to the idea could be compromised.

The requirements for filing a provisional application are less than those of the non-provisional, but they must be adhered to equally. The USPTO requires that a provisional application must meet specific requirements, e.g. best mode and enablement requirements. Otherwise, the provisional application may not be relied on to claim priority. If a provisional application is drafted without a complete claim set, it may not be clear if requirements are met until after the non-provisional application is drafted with a complete claim set. At that point, it would be too late to add any details to the non-provisional application and the time and effort spent on the provisional may be a complete loss.

The provisional application must be sufficiently detailed at the time of filing, with drawings necessary to understand the invention and a complete disclosure. New matter cannot be added to the non-provisional application if it is to claim priority to the provisional application. If a non-provisional claims priority to a deficient provisional application, the validity of the issued patent can be challenged based on the priority of its claims that date back to the provisional application filing.

Provisional applications are frequently filed to satisfy the “Statutory Bar” requirement. This requirement relates to the obligation to file an application within one-year of public disclosure, e.g. publication, public use, and offers for sale. If a provisional application is filed to satisfy this requirement and is later found to be inadequate, then the “Statutory Bar” requirement was not satisfied. Not meeting this requirement, even unintentionally, could result in catastrophic damages with the loss of all patent rights.

Why a Provisional Patent Application is an Important Tool:

Provisional applications are important in their ability to provide an invention a filing date and patent pending status. The filing date is very important now that the U.S. is a first-to-file country, under the America Invents Act. This means that the first inventor to file for an invention with the USPTO is the rightful owner of the invention. Without an official filing date and application number assigned by the USPTO, an inventor could lose their rights to their invention.

Patent pending status should be considered a must for any inventor interested in disclosing their invention to the public. This protected status allows an inventor to confidently market and discuss their invention with potential investors, partners, and purchasers. Marketing of this nature is best done as early as possible and shouldn’t be done without the protection of patent pending status. However, if an invention is disclosed to the public before obtaining patent pending status, a patent application (either provisional or non-provisional) must be filed by the one-year deadline imposed by the ‘Statutory Bar’ requirement. Generally, a provisional application is filed to satisfy this requirement quickly.

Provisional applications are also important in the effect they have on the term of a patent, e.g. how long patent protection lasts. Following the traditional path of filing a provisional application, followed by filing a non-provisional application a year later, is beneficial to the patent term. A patent issued from a non-provisional application has a patent term of 20 years. If a patent also claims priority to a provisional application, to take advantage of the ability to claim the earlier provisional application filing date as its own, the filing date of a provisional application is not counted when calculating the patent term. This effectively extends the patent term by one year. An extra year of patent term is potentially priceless!

Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a provisional application or other patent applications.