General Information about Provisional Patent Applications
Q: "WHAT IS A PROVISIONAL APPLICATION... in 1 short sentence?"
A: "A fast, simplified, invention placeholder lasting 12 months."
A: "A fast, simplified, invention placeholder lasting 12 months."
Explained further...
- Fast: A provisional application for patent (provisional application) is a way to get your invention on the books quickly at the USPTO. It lets you establish your priority to the invention in a later filed non-provisional patent application. In our new "First to File" system of the 2012 America Invents Act, it is important to be the first inventor to file an application if you wish to protect it with a patent. A provisional application is generally quicker to prepare and file than a non-provisional application.
- Simplified: It is generally easier to file a provisional application. This is because many of the formal elements that are required in a non-provisional application such as an Oath, Declaration, and Claims, are not a part of a provisional application.
- Placeholder: A provisional application is not a patent. Rather, it serves to protect your place in line at the USPTO. Once a provisional application is filed, the term "Patent Pending" may be applied in connection with the description of your invention.
- 12 Months: A provisional application is often used as a relatively inexpensive means to hold a place in line at the USPTO while further exploring the market's interest in the invention. The inventor has 12 months from the date of filing the provisional application to decide if it makes economic sense to pursue a non-provisional application. If a proper non-provisional application is not filed within 12-months, it is possible to lose the right to ever file for a patent on the invention.
Want to Get "Patent Pending" with a Provisional Application?
Q: WHAT ARE SOME FEATURES OF A PROVISIONAL APPLICATION?
A: Some provisional application features include:
A: Some provisional application features include:
- Providing simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to higher cost of filing and prosecuting a non-provisional application for patent.
- Establishing official United States patent application filing date for the invention.
- Permitting authorized use of “Patent Pending” notice for 12 months in connection with the description of the invention.
- Beginning the Paris Convention priority year.
- Enabling immediate commercial promotion of invention with greater security against having the invention stolen.
- Permitting inventor(s) to obtain USPTO certified copies.
- Providing for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).
BUT IT'S NOT ALL FEATURES. HERE ARE SOME WARNINGS:
- A provisional application automatically becomes abandoned when its pendency period expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional application filing.
- Beware that an applicant whose invention is “in use” or “on sale” in the United States during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention.
- A claim under for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later).
- Independent inventors should fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor. Some "invention promotion" firms misuse the provisional application process, leaving the inventor with no patent.
PROVISIONAL APPLICATIONS CAN AFFECT PATENT DURATION:
- Filing a provisional application, and then subsequently filing a non-provisional application within the 12-month pendency deadline, can effectively lengthen the exclusive right of a patent by as many as 12 months. The relevant non-provisional application must properly reference the benefit of the provisional application for this to apply.
- Alternatively, a provisional application may be converted into a non-provisional application. In some circumstances, this can be a paperwork shortcut, but it will have a negative impact on the patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. Regarding timing, it would be as though you had filed a non-provisional from the start, and the patent term will reflect that.