A provisional patent application is an extremely useful tool for technology startups. It allows a company to file a utility patent application on an invention without disclosing the elements (claims) of the invention to be protected, oath or declaration regarding the invention, or disclosure statement of prior art incorporated into the invention. It must be filed within 12 months of the first public disclosure of the invention, such as selling the invention to the public. Below we explore what is a utility patent, the benefits of a provisional patent, and how to convert a provisional patent filing into a non-provisional patent filing.
What is a Utility Patent?
Utility patent rights allow a company to protect a novel, non-obvious, useful invention from production or distribution by anyone other than the patent holder. To secure patent rights, the inventor must apply to the United States Patent and Trademark Office. The application is very detailed. It must demonstrate the nature of the creation, the specifications for the function or how the invention is used, drawings showing the structure and dimensions of the invention, and claims regarding the elements of the invention that are novel, non-obvious, and useful which should be protected. The idea is that the patent application will adequately disclose all of the information about the invention sufficiently that any person having ordinary skill in the art (PHOSITA) would be able to reproduce are create the invention. A PHOSITA is generally someone with technical knowledge or skills in the craft or function of the invention.
Filing a provisional patent application
A provisional patent application must include the following information:
- Application forms identifying the filing as provisional,
- The names of all inventors,
- Residences of the inventors,
- Name or title of the invention,
- Patent agent or attorney and registration number (if applicable)
- Address for correspondence, and
- Any U.S. Government agency with rights in the invention.
The application will generally include specifications for the objective, purpose, and usefulness of the invention. To make certain that the invention description and specification is understood, it is advisable to include drawings of the invention. These drawing can be amended later at the time of the non-provisional filing.
What are the benefits of a provisional patent?
As previously mentioned, the provisional patent is a patent application that leaves off the formal patent claims, oath or declaration, and disclosures of prior art. The purpose of the provisional patent is to allow inventors the options of filing a lower-cost, easier-to-prepare, patent application while continuing to develop the invention. The inventor can ascribe the phrase “patent pending” to the invention to make others aware that the invention is subject to a claim of patent rights. Another important benefit is that the filing date for the provision application becomes the filing date of a later non-provisional patent application covering the invention. The provisional patent filing last for 12 months. If the inventor files a non-provisional patent application within this 12-month window, the filing date of the non-provision application becomes that of the provisional application. In some cases, the non-provisional application can be filed within 14 months with a statement that missing the 12-month deadline was an accident. The USPTO may still relate the non-provisional filing date back to that of the provisional filing date.
Imagine an inventor is working on a patentable invention. She needs to test the product in the market to determine what features needs to be improved before fully marketing the product. Filing a provisional patent will allow her to test the product in the market and continue to make modifications to the final product during the 12-month period. She can then file the non-provisional application with the identified claims and she is protected from competitors copying the claimed elements of her design during this period. Also, it can often take several months to years for the USPTO to fully complete a patent prosecution. During this pendency, competitors should be reluctant to copy any of the claimed elements in case all claims are eventually granted.
Filing the non-provisional patent application
The filer of a provisional application has two options to convert the filing into a non-provisional application. She can file an amendment to the provisional patent application or she can file a non-provisional patent application referencing the provisional filing. In either event, the non-provisional patent application must include the claimed elements of the invention, oath or declaration of the inventor that the invention is novel, and references to prior art to rely upon in the examination. The downside of filing an amendment regards the time period for patent protection. Most utility patents offer protection of rights for 20 years from the date of filing. Filing a new petition that references the provisional patent application protects the invention for 20 years from the date of filing of the non-provisional patent application.
Intellectual property is a highly complicated area of legal practice. If you need help with the patent filing process, contact the professionals at LawTrades for assistance. These professionals have experience and understand the nuances that can affect your intellectual property rights.