A provisional patent application is an optional first step toward receiving a granted patent. Provisional applications are available for both utility patents and plant patents; however, provisional applications are not available for design patents.
The filing process is relatively inexpensive and basic compared to filing a nonprovisional patent application, as there are fewer filing requirements, and the fees for filing are lower. Filing a provisional application does not require formal patent claims, an oath or declaration, or any information disclosure (prior art) statement. Filing a provisional application does, however, require a specification describing the invention. It is also advisable to submit with the application any drawings necessary for the understanding of the invention.
The simplicity of this filing process for a provisional application is, at least in part, because the application will not be examined by the United States Patent and Trademark Office (USPTO). As such, if no further action is taken after filing (i.e., by filing a nonprovisional patent application), the provisional application will lapse, will not publish, and will not automatically mature into a patent.
A provisional application can give advantages to inventors who are seeking a granted patent in the future. A provisional application will establish a filing date with the USPTO. The provisional application may allow an inventor to further finesse the innovation or the application; secure funding, partners, or investors; determine viability of the technology; or decide whether to move forward. Due to the less stringent filing requirements, it may allow an applicant to file something quickly with the USPTO, such as before disclosing to a potential customer or within the grace period for public disclosure.
In the United States, after the first public disclosure of an invention, an inventor has a one-year grace period to file either a provisional application or a nonprovisional application in order for the subject matter to be eligible for a future patent. Note, however, that not all countries have this grace period, and a public disclosure prior to filing a patent application may be a bar to patentability in that country. Therefore, it is still advisable to file a patent application prior to any public disclosures to maintain your right to file an application in jurisdictions outside of the United States.
Filing a provisional application essentially works as a placeholder application that allows the inventor(s) or applicant to establish an earlier effective filing date in a later-filed nonprovisional application. This nonprovisional application is the application that would get examined in order to (hopefully) become a patent. An earlier filing date may be beneficial to applicants to establish priority over later-filed applications for the same or similar inventive concepts. The earlier priority date can help to limit the amount of prior art that can be used against the application once a corresponding nonprovisional application has been filed and has entered the prosecution stage of the patent process. Further, having an earlier priority date than a competitor means that even if a competitor receives a patent, the competitor may be forced into claims having a narrower scope. In some cases, competitors may not be able to get a patent at all in view of the earlier filed application(s).
The marking “Patent Pending” may be used in connection with the subject matter of the application during the duration of the provisional application, which discourages competitors from stealing the technology before a patent is granted.
Ensuring You Benefit from a Provisional Application
As mentioned, a provisional application can be thought of as a placeholder for a nonprovisional application. Once a provisional application is filed, it has a 12-month pendency period in which it can be converted to a nonprovisional application or in which a nonprovisional that is filed can claim the priority date therefrom. The provisional application will not mature into a patent if no action is taken during this pendency period.
The USPTO is strict about the 12-month period, but there is still hope for a nonprovisional application if the pendency period has elapsed but it is still within 14 months of filing the provisional application. A nonprovisional application can still claim the priority date of a provisional application filed within 14 months upon filing a grantable petition under 37 CFR 1.78; however, the petition is only available if the delay in filing was unintentional. That said, the safest option is to file the nonprovisional application within the given pendency period for a smoother application process.
The USPTO also requires steps to be taken when filing the nonprovisional applications to receive benefit from the original provisional application. When filing a nonprovisional application, the claimed subject matter must be supported in the provisional application to receive the benefit of the earlier filing date. There must be a specific reference in the nonprovisional application to claim the benefit. This reference is included in the Application Data Sheet (ADS).
Filing a provisional application can be a great asset to an inventor or applicant seeking to patent an innovation, but for it to be beneficial, the application must be done well and in a timely manner. Although a provisional application provides temporary protection to an invention, it requires further action to mature into protection in the form of a patent.