Provisional Patent Applications

An Important Tool for Inventors

by Intellectual Property Attorney Bill Honaker, the IP Guy

What’s a Provisional Application?

A provisional application is a quick, efficient, and cost-effective way to get a patent application filing date with the United States Patent Office. It will also allow you to mark your products with the phrase, “patent pending.” The provisional application is basically a placeholder, but is only good for one year, and only beneficial if you file a non-provisional application within that one year window. A patent cannot issue from a provisional; it can only issue from a non-provisional application.

It’s also critical to know that the provisional application must fully describe your later claimed invention to get the benefit of the earlier filing date. The claimed subject matter in a non-provisional application only gets the benefit of the earlier filing date if it is supported in the provisional. Special care must be taken in drafting the provisional to fully describe the invention. If you leave something out that is later claimed in your non-provisional, that claim will only get the benefit of the non-provisional filing date, and not the earlier filing date.

Filing dates are important for determining who was first to file, what is considered prior art, and filing in other countries. In the United States, a Patent is only issued to the first to file. If someone files between your provisional and non-provisional dates, and you lose your earlier filing date, they will get the patent. If prior art develops between your filing dates, it may limit or prevent you from getting patent protection. If you disclose after your provisional date and lose your earlier filing date, you will jeopardize your rights in other countries and may not be able to file.

Why file a Provisional Application?

The benefits of filing a provisional application are that they are quicker and cheaper to file. A provisional application doesn’t have formal patent claims, an oath or declaration, or a disclosure of prior art. Not having claims reduces the time involved in preparing the application, which results in lower costs.

The reasons to file include the use of the mark, “patent pending” on products, the ability to test the market, and show the invention to investors, suppliers and licensees. Another benefit is protecting the invention as it develops. If the invention is changed during the year, the changes can be added in another provisional that gives additional filing dates that can be claimed in the non-provisional. The provisional also lets you test the waters to see if patent protection is important. If you don’t get the customer response you expected during the year, you don’t have to file the non-provisional and save the cost.

Protect Your Right to File in Other Countries

One of the most common benefits of provisional patent applications is filing quickly to allow the invention to be shown to others without losing your ability to seek patents in other countries.

Just recently, an inventor called and said they were going to show an invention in a few days at a tradeshow. If the invention is shown without a patent application being filed, foreign patent rights will be lost. Most other countries require “absolute novelty” which requires that the invention not be disclosed before an application is filed. Filing a provisional patent application will protect the ability to file in these countries.

US rights will not be lost in this example. The United States gives a twelve-month grace period. You can describe your invention in a printed publication, use it publicly, offer it for sale, or sell it, or otherwise make it available to the public, and still file a patent as long as you file your application within one year of the disclosure date.

By filing a provisional, the application protects the ability to file in other countries. Since the only requirement is a written disclosure, they can be completed quickly. But you can also include drawings or photos. As they say, a picture’s worth a thousand words. Detailed drawings or pictures can help to “describe the invention completely” and help in getting the application filed quickly and cheaply.

In this example, drawings and photos were submitted of the product. Additionally, the PowerPoint presentation describing the invention details and a write up was filed to secure the date.

What Are the Requirements?

The provisional application must be filed with the United States Patent and Trademark Office and must include:

• A written description of the invention (drawings are strongly suggested, but not required)
• A cover sheet including:
  • Title of the invention
  • Name all of the inventor(s)
  • Inventor residence(s)
  • Name and registration number of attorney or agent and docket number (if applicable)
  • Correspondence address
  • Any U.S. Government agency that has a property interest in the application.
• The government filing fee is $70.00 for micro-entities, $140.00 for small entities, or $280.00 for large entities.

Filing Additional Provisionals

Additional Provisionals can be filed. Each additional filing gets the filing date it was filed. This can be useful if the invention is being improved during the year.

Further developments to an invention after the first public disclosure are fairly common. User feedback, cost-cutting, redesign of components, are all common. The initial provisional protects the initial invention and the improvements can be added in later provisionals during the year. The non-provisional can claim the benefit of all these filing dates, so long as they are within the one-year window.

Provisional vs. Non-Provisional

A provisional application only requires a written description. Unlike a non-provisional application which has a number of specific requirements, including carefully drafted claims.

A non-provisional application requires:

• Title of the invention
• Cross-reference to related applications
• Statement regarding federally sponsored research or development
• Background of the invention
• Brief summary of the invention
• Brief description of the several views of the drawings
• Detailed description of the invention
• Claim or claims
• Abstract of the disclosure
• Drawings
• Oath or declaration
• Cover sheet
• Names of all inventors and addresses
• Government filing fee

There are specific requirements for each of these, and the USPTO will object if they are not followed. The most difficult part is the claims. The non-provisional application will be examined by an Examiner. It’s the Examiner’s responsibility to search for prior art and determine whether a utility patent should be issued. Filing a patent application definitely requires legal advice to adequately protect your intellectual property because of the claims. The claims are what define your invention, and if not carefully drafted, will limit your protection.

Is It Good to Assign the Application?

There is no requirement to assign the provisional application, but it is a good idea. An inventor may not be available when the non-provisional application is filed. If the provisional was assigned, this can be carried over to the non-provisional application. It’s also helpful if the inventor refuses to sign the declaration.

Takeaway

Provisional applications are an important tool for inventors. They provide options to the inventor with lower costs and faster filing. You should always have a provisional filed before you publicly disclose your invention, or risk losing valuable rights.

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