Provisional Patent

The Provisional Patent Application: What You Need to Know

A provisional patent application (PPA) is a patent application that can be used by a patent applicant to secure a filing date while avoiding the costs associated with the filing and prosecution of a non-provisional patent application. More specifically, if a non-provisional application is filed within one year from the filing date of a PPA, the non-provisional application may claim the benefit of the filing date of the PPA. (Why filing dates for patent applications are important will be discussed below.) Because a PPA is not examined, an applicant can also avoid the costs typically associated with non-provisional patent prosecution (certain attorney’s fees, for example) for a year while determining whether his/her invention is commercially viable. Further, because a PPA is not made public unless its application number is noted in a later-published application or patent, the failure by an applicant to file a non-provisional application based on his/her PPA will not lead to public disclosure of his/her invention.

What are  the benefits of filing a PPA?

A PPA essentially provides a one-year extension as to the filing of a U.S. non-provisional patent application.  In doing so, a PPA provides an applicant with an additional year to experiment, perfect an invention, find financial backers, determine sales potential, find interested parties for licensing, etc. before filing his/her non-provisional application.  Because a PPA is not examined, an applicant can also avoid the costs associated with prosecuting a non-provisional application during this one-year period.

What are the possible pitfalls of filing a PPA?

There are no extensions on the one-year time limit for filing a non-provisional application claiming benefit of a PPA filing date.  (see proposed change below)  By law, either you file a non-provisional application within a year or you lose the benefit of the filing date. Importantly, most other countries usually base the time for filing a non-provisional application in their countries on the PPA filing date. This means that an international or foreign application may need to be filed at the same time that a non-provisional application claiming benefit of a PPA is filed in the U.S.  Further, if the PPA does not adequately describe all that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the PPA filing date. This could affect patentability if a reference disclosing the later-described invention is published after the filing date of the PPA but prior to the filing date of a non-provisional application.

Benefits of Provisional Specification:

There are several advantages of filing a provisional patent application:
■ Lower cost and faster preliminary process:
The provisional patent filing fee is much less expensive than a full patent fee. In addition, the technical requirements are simplified, which means it takes much less time and money to prepare and file a provisional patent application.
■ Establishes an official patent filing date:
Full patent applications filed within twelve months of the provisional application date have the benefit of “relating back” to the provisional patent application. This means that should a dispute arise over invention ownership, the Patent Office will accept the provisional patent’s earlier filing date as the date of filing.
■ One year to assess the commercial viability of your invention:
The inventor can take advantage of the provisional patent’s one-year pendency period to evaluate the commercial potential of the invention before committing to the upfront costs of drafting and filing a full patent.
■ Use of the “patent pending notice:
Prior to the advent of the provisional patent application, an inventor had to file a full patent application in order to use the label Patent Pending” or “Patent
Applied For”. The inventor can now do so upon filing a provisional patent application. This label is often useful in deterring potential theft.
■ Confidentiality:
A provisional patent preserves the confidentiality of your application without publication. However, one should try to align the disclosure in a provisional application as close as possible to the final Claims one has in mind. Incomplete applications will only harm the applicant’s chances in the future. Adequate disclosures should be made. The full implications of the invention should be understood and a rough set of claims in line with the broad inventive concept and intended coverage to be sought should be kept in mind, even if such claims are not presented at this stage. Also, supporting drawings have to be provided.

The provisional patent application is not a substitute for filing a non-provisional patent application. It is important to understand that even if one file a provisional patent application, he will still need to file complete specification down the road to receive patent protection. Think of the provisional patent application as a possible step in the patent process, but not the final step.


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