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Provisional Patent Application: Everything You Need to Know

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A provisional patent application is a utility patent filed without the accompanying patent claims, oath or declaration, or any disclosure of prior art incorporated in the patent application. The purpose of the provisional patent is to provide inventors with a lower-cost solution to protecting their invention early in the development process (or before commercialization).

How Does a Provisional Patent Work

The following are the major attributes of the provisional patent.

  • 12-Months of Protection – The provisional patent provides protection for an invention (qualifying for utility patent protection) for a period of 12 months.
  • Disclosure – To secure patent protections, the inventor must file the provisional patent application within 12 months of disclosing the invention to the public. Disclosure generally means publishing the invention, selling or leasing it, or otherwise providing significant information to the general public about the invention. The provisional patent cannot be employed if there was a prior patent application (foreign or domestic). If a provisional patent or non-provisional patent application is not filed within 12 months of disclosure, the inventor loses all protections.
  • Examination – The provisional patent is not examined on its merits. Again, you can think of it as a placeholder.
  • Non-Provisional Patent Filing – Once the patent application is filed, the applicant has 12 months to file a non-provisional patent (or amend the provisional patent to convert it to a non-provisional patent filing). There is an option to convert the provisional patent application to a non-provisional filing. The downside of this approach is that the term of patent protection starts at the time of the original provisional filing (rather than at the date of conversion). This loses up to a year of patent protections.
  • Filing Date – If the inventor files the non-provisional patent application during this 12-month period, the date of filing for her non-provisional patent is considered to be the date of the provisional filing. If you miss the 12 month deadline, there is a petition to accept the non-provisional patent. This must be filed within 14 months of the original filing and include a statement that missing the deadline was unintentional.
  • Market Testing – During the pendency of the provisional filing, the inventor can use this 12 months to test the invention in the market for product fit, functionality, and feasibility. The elements of the invention claimed for protection have not yet been disclosed. During this time, the claimed elements of the invention may be altered somewhat.
  • Non-Provisional Filing – The non-provisional filing must contain claims about the elements of the inventions capable of patent protection. This means they must state how these claimed elements are novel, non-obvious, and useful. The claims must fully disclose how these invention elements function. The inventor will generally include drawings to illustrate the structure or functionality. The non-provisional patent must contain a reference to the original provisional filing. To take advantage of the original provisional filing date, this claim must be filed within 16 months of the provisional filing or 4 months of the non-provisional filing. The non-provisional filing must also contain an oath or declaration from the inventor(s), and a reference to all prior art incorporated in the patent filing.

Contents of the Provisional Patent Application

The cover sheet of the provisional patent application will identify:

  • the application as a provisional patent application;
  • 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 U.S. Government agency that has a property interest in the patent application.

Provisional Filing must contain a description of the invention. This is normally done through a “specification”. The specification will allow a reader to understand how the invention works or functions. It will show its usefulness. Recall, the patent filing does not include “claims” or the elements of the invention sought to be protected. These elements will be described in the non-provisional application. It is recommended that the inventor include drawings to make certain the functionality of the invention is understood. These will be mandatory when the non-provisional application is filed.
It is also important to note that all inventors materially contributing to the patent filing should be disclosed in the application. The provisional patent and non-provisional patent application must share at least one common inventor.

  • A provisional patent application must be entitled to a filing date and include the basic filing fee in order for a non-provisional patent 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 patent applications after filing, other than those to make the provisional patent application comply with applicable regulations.
  • No information disclosure statement may be filed in a provisional patent application.

How to File the Provisional Patent Application

The easy way to file the application is via the online portal on the USPTO.gov website. This allows you electronically fill out the cover sheet, upload PDFs, and pay the filing fee online. You can also visit the USPTO website for the address and filing forms.

LawTrades

LawTrades knows intellectual property. Utility patents are extremely valuable assets for a business. The process for filing and securing patent rights is complicated. Messing up the patent application process can have significant consequences. Let the experts at LawTrades assist your with filing your provisional patent or non-provisional, patent application.