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Provisional Patents

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Under the provisions of
35 U.S.C. § 119(e), the corresponding non-provisional application would benefit in three ways: (1) patentability would be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and (3) the twenty-year patent term would be measured from the later non-provisional application filing date. Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term. Inventors may file U.S. provisional applications regardless of citizenship. Note that provisional applications cannot claim the benefit of a previously filed application, either foreign or domestic.

Features

  • Provides simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;
  • Establishes an official United States patent application filing date for the invention;
  • Permits 12 month ‘s authorization to use “Patent Pending” notice in connection with the description of the invention;
  • Begins the Paris Convention priority year;
  • Enables immediate commercial promotion of the invention with greater security against having the invention stolen;
  • Preserves application in confidence without publication in accordance with 35 U.S.C. 122(b), effective November 29, 2000;
  • Permits applicant(s) to obtain USPTO certified copies;
  • Allows for the filing of multiple provisional applications for patent and for consolidating them in a single §111(a) non-provisional application for patent; and
  • Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).

Provisional Application for Patent Filing Date Requirements

The provisional application must be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention. These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.

A filing date will be accorded to a provisional application only when it contains:

  • a written description of the invention, complying with all requirements of 35 U.S.C. §112 1st paragraph and
  • any drawings necessary to understand the invention, complying with 35 U.S.C. §113.

If either of these items are missing or incomplete, no filing date will be accorded to the provisional application.

To be complete, a provisional application must also include the filing fee and a cover sheet identifying:

  • the application as a provisional application for patent;
  • the name(s) of all inventors;
  • inventor residence(s);
  • title of the invention;
  • name and registration number of attorney or agent and docket number (if applicable);
  • correspondence address; and
  • any US Government agency that has a property interest in the application.

Form PTO/SB/16, available on the printable forms page of the USPTO website at http://www.uspto.gov/web/forms/index.html may be used as the cover sheet for a provisional application.

Filing Fee

Fees are subject to change. The current fee for a provisional application for patent can be found on the USPTO fee page. USPTO Contact Center (UCC) customer service representatives are available Monday through Friday (except Federal holidays) at 800-786-9199 to provide fee information. Payment by check or money order must be made payable to “Director of the U.S. Patent and Trademark Office”.

Mail the provisional application and filing fee to:

Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450

This information is general in nature and is not meant to substitute for advice provided by a patent practitioner. Applicants unfamiliar with the requirements of US patent law and procedures should consult an attorney or agent registered to practice before the USPTO.

The USPTO maintains a directory of registered patent attorneys and agents at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html.

Cautions

  • The benefits of the provisional application cannot be claimed if the 12 month deadline for filing a non-provisional application has expired.
  • A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of the provisional application filing date:
    1. a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or
    2. a grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.
  • Provisional applications for patent may not be filed for design inventions.
  • Provisional applications are not examined on their merits.
  • Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic.
  • It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
  • 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.
  • All inventor(s) named in the provisional application must have made a contribution either jointly or individually to the invention as disclosed 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.
  • A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
  • There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
  • Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
  • No information disclosure statement may be filed in a provisional application.

WARNINGS

A provisional application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional-application filing.

Beware that an applicant whose invention is “in use” or “on sale” (see 35 U.S.C. §102(b)) in the United States during the 12 month provisional-application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional-application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. §102(b)).

Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000.

Independent inventors should fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.

Last Modified: December 5th, 2009