Provisional Patent FAQ
- What is the “USPTO”?
- What is a provisional patent application?
- How long does a provisional patent application last?
- Why should an inventor consider filing a provisional patent application?
- How does an inventor convert the provisional patent application into a full patent?
- When should I file my provisional application for patent?
- What is the difference between a provisional patent application and a non-provisional patent application?
- How does an inventor file for a provisional patent?
- What happens if the inventor does not own the invention?
- Can a U.S. provisional patent application be filed in a language other than English?
- When can the invention be marked with “patent-pending”?
- Can you please explain what the term “patent pending” means and what rights the inventor has to the product if the status is pending?
- I am working on an idea, but don’t know if our changes would be considered non obvious. The change is simple, but would help make the similar products standard by adding a plug, rather than a hard wire connection. Is something as simple as adding a plug considered non obvious?
- What do you mean by non-obvious?
- Do I need to have all the paperwork (e.g., claims, drawings, etc.) completed and ready before I begin filing my application?
- Can a provisional patent contain more than one invention?
The “USPTO,” sometimes shortened to “PTO” or simply “Patent Office,” is another name for the U.S. Patent and Trademark Office. This office is the governing authority for granting patents and trademarks in the U.S.
What is a provisional patent application?
A provisional patent application is a way to establish and protect a “date of invention” for one year. The provisional patent application was created to provide inventors with an inexpensive way to temporarily protect their inventions. The provisional patent application gives an inventor twelve (12) months to prepare a full patent application. A provisional patent application allows the inventor(s) establish an early effective filing date for a patent without a formal patent claim, oath, declaration or an information disclosure statement.
Unlike conventional utility patent applications, a provisional patent application:
- will not be searched or examined;
- will never become a patent;
- is automatically abandoned in one year;
- cannot claim priority or benefit from any other application; and
- does not start a 20 year patent term running.
How long does a provisional patent application last?
A provisional application for patent lasts 12 months from the filing date. The USPTO will not grant extensions for any reason. The inventor(s) must file a non-provisional patent application (NPA) within that period to take advantage of the provisional application’s filing date. If not, the provisional application is declared abandoned. Another provisional application or even a full patent can still be filed, just without the benefit of the earlier filing date.
Why should an inventor consider filing a provisional patent application?
Provisional applications are less expensive and easier to file than non-provisional patent applications (NPAs). Provisional applications can be done quickly, in advance of an invention’s public disclosure. This establishes an official invention date with the USPTO.
Provisional applications offer a number of advantages, including immediate use of the label “patent pending.” One of the most practical benefits of filing a provisional application is that it allows an inventor time to assess his/her invention’s potential before committing to the higher cost of filing a non-provisional utility or plant patent application. Provisional applications are not published by the USPTO, giving the inventor protection and privacy.
How does an inventor convert the provisional patent application into a full patent?
An applicant who files a provisional patent application must file a corresponding non-provisional patent application (NPA) within 12 months to benefit from the earlier filing date. The corresponding NPA must specifically refer to the provisional application.
The U.S. Patent Office will then compare the NPA with the earlier-filed provisional application. If the subject matter of the descriptions is determined to be the same in both applications, the Patent Office will grant the NPA the provisional application’s earlier filing date.
When should I file my provisional application for patent?
A provisional application for patent may be filed anytime after the invention is created – the inventor(s) should be able to fully describe how to make and use the invention. Some inventors wait to file a provisional application to delay the start of the 12 month clock.
Important note: If an inventor has already disclosed his/her invention to the public (such as by sale, offer for sale, use in public or written publication), a provisional application may still be filed to establish a filing date. Under U.S. patent law, a corresponding non-provisional patent application (NPA) must be filed no later than one year after the public disclosure.
What is the difference between a provisional patent application and a non-provisional patent application?
A provisional application for patent is a shorter version of a non-provisional patent application (NPA). Both may be used to apply for a utility patent. A provisional application secures a filing date that can be referenced if an NPA for the same invention is filed. Once a provisional application is filed, an inventor has exactly one year (if the invention hasn’t yet been publicly disclosed) to file the NPA. If an inventor does not file an NPA within that timeframe, the provisional application is deemed abandoned. This means the inventor loses the right to that filing date.
Although inventors may still be able to file an NPA later, they lose the earlier filing date of the provisional application. They may even lose ownership rights to the invention if they disclosed the invention to the public more than a year ago. Filing a provisional application saves inventors from a costly upfront investment and allows them time to assess their invention’s commercial value. They can also conduct research and seek funding before committing to the cost and lengthy process of preparing a full patent application.
An NPA establishes an invention’s filing date (unless it claims the benefit of an earlier filed application, such as a provisional application). Filing an NPA starts the official examination process with the U.S. Patent Office to determine if the invention is patentable.
How does an inventor file for a provisional patent?
Filing a provisional patent application typically requires the skill of a registered patent attorney or patent agent who understands patent law and the formalities of filing a provisional patent application. The USPTO provides a list of registered patent practitioners at http://www.uspto.gov/go/dcom/gcounsel/oed.htm.
NOTE: WE DISCLAIM ANY AND ALL LIABILITY FOR AN INVENTOR’S DECISION TO NOT HIRE A PATENT PRACTITIONER.
However, inventors frequently and repeatedly ask this question. Accordingly, our firm recommends that an inventor first conduct research on the provisional patent application process and the inventor review the USPTO tutorial https://uspto.connectsolutions.com/conceptprotection/. Thereafter, we suggest that an inventor consider following process with a qualified patent practitioner to prepare a patent application.
The 12 Step Program for Filing a Provisional Patent Application
- 1. Search to see if your invention already exists. For example, conduct a key word search on Google patents.
- 2. Review the USPTO tutorial that discusses conception to invention, patent searches and other background material.
- 3. Fill out USPTO Form Cover Sheet for provisional patent.
- 4. Describe the problem(s) that you are trying to solve.
- 5. Describe why the current technology does not solve problem(s).
- 6. Describe your solution.
- 7. Describe how your solution might evolve in the future. For example, could it include synthetic, natural, and/or other materials? Could it include computer components? Could it be made in various shapes, various heights or various widths? Remember your provisional will hold your place to file your non-provisional and you’ll need to think about how your invention may improve, change, and how someone might copy
- 8. Present at least one figure, show steps (like a recipe), pictures (if there is a prototype), video clips (if you have) or a hand sketch.
- 9. Include a return receipt, postage paid postcard with number of pages of information, number of figures, check with payment to USPTO, and any other information you are including. You want to include an itemized list of what you are mailing to USPTO on your prepaid, self addressed postcard. Typically, the USPTO will send the postcard back with a serial number before sending an Official Filing Receipt. Please check the http://www.uspto.gov/ web site to calculate your fees. For example, a small entity filing a provisional patent application in FY’09 must pay $110 USD.
- 10. Make a copy of everything you are mailing to USPTO – cover sheet, description of problem, solution, evolutions of solution, at least one figure (or other helpful media), return postcard, payment to the USPTO, DVDs or CDs with additional information, and anything else you are mailing.
- 11. Mail out the original materials via USPS Express Mail. The filing date of the Provisional Patent Application will be your mailing date. Alternatively, you may be able to file your Provisional Patent Application online via the EFS information system. Please visit http://www.uspto.gov/ for a further explanation on how to use the EFS system.
- 12. Docket expiration of provisional patent application within 12 months of filing (or earlier if you have disclosed to others, published or sold. Again, read & study the materials in the USPTO tutorial as well as other information about provisional patent applications.
What happens if the inventor does not own the invention?
All U.S. patent applications must be filed in the name of the actual inventor(s). As often happens, however, the owner of the invention may be another person or entity. This may occur, for example, if the invention is created as part of one’s employment or if it is sold or transferred to somebody else.
If this is the case, the inventor(s) can file an Assignment with the U.S. Patent and Trademark Office (USPTO) either when the patent application is filed or anytime after that to inform the USTPO of the change in ownership.
Can a U.S. provisional patent application be filed in a language other than English?
Yes. A non-provisional or provisional application may be in a language other than English. (2) Provisional application. If a provisional application is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a non-provisional application.
When can the invention be marked with “patent-pending”?
An inventor can use “patent pending” upon the filing date receipt of the provisional application for the duration of the one year (or less if invention disclosed, sold, etc.), unless you file a non-provisional application within that year.
Can you please explain what the term “patent pending” means and what rights the inventor has to the product if the status is pending?
The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending”. These phrases provide notice that an application for patent has been filed in the USPTO. False use of these phrases or their equivalent is prohibited.
I am working on an idea, but don’t know if our changes would be considered non obvious. The change is simple, but would help make the similar products standard by adding a plug, rather than a hard wire connection. Is something as simple as adding a plug considered non obvious?
The answer is not always that easy, please see MPEP 2141, http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm#sect2141 for guidance in determining obviousness.
What do you mean by non-obvious?
Obviousness is covered by 35 U.S.C 103. Under this statute, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In a rejection under this statute, it is necessary to modify a single reference or to combine it with one or more other references. The term “obvious” applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.
To determine if a modification/combination is obvious, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. See MPEP 2142.
Do I need to have all the paperwork (i.e. claims, drawings, etc.) completed and ready before I begin filing my application?
A provisional application allows filing without a formal patent claim, oath or declaration, or any information disclosure statement; it provides the means to establish an early effective filing date for a later filed non-provisional patent application filed under 35 USC 111(a) within 12 months of the provisional application filing date.
Can a provisional patent contain more than one invention?
More than one invention may be described in a single provisional application. Note that a provisional application is not examined and a patent cannot issue from that provisional application. If you wish to obtain a patent after you have filed a provisional application, you must file a non-provisional application no later than one year after the filing of the provisional application. If the non-provisional application contains claims to more than one invention, the examiner may make a restriction requirement and require you to elect claims to one invention for examination in the non-provisional application.
Last Modified: December 5th, 2009