Provisional Patent Applications

Provisional Patent Applications The two types of patent applications are provisional and utility. A provisional application is not a true patent application; it basically allows an inventor to hold his or her place in line. The inventor receives a filing date but avoids paying the fees associated with filing a utility application.

A provisional application never matures into a patent and has no enforceable rights. For an invention to receive a patent, a utility application claiming priority to the provisional one must be filed within one year. The provisional application is not examined for patentability and simply is abandoned 12 months after the filing date. This time period allows the inventor to assess the marketability of the invention and secure the resources necessary to pay for the acquisition and maintenance of a patent.

The Benefits of a Provisional Application

Utility patent applications require the following:

  • a written description of the invention that is sufficient to teach a person skilled in the relevant art how to make and use the invention without undue experimentation
  • a drawing, if it is necessary for understanding the invention
  • at least one claim, which is a description of what the applicant seeks to protect — in other words, a definition of exactly what the patent excludes others from making, using or selling (e.g., “a chemical solution for cleaning marble floor, consisting of 30% hydrogen peroxide…”)
  • an oath or declaration that states that the applicant is the true inventor of the claimed invention

This level of formality contributes to the high costs of filing a patent application, which can range from $8,000 to $25,000 to prepare, plus the government filing fees, which are about $1,000.

A provisional application, on the other hand, requires only a written description of the application and a drawing, if necessary. A provisional application may be formal or informal; many are nothing more than bundles of notebook pages. In addition, the government filing fees are only about $200.

U.S. patent law allows a utility application to claim the benefit of a provisional application only if the utility application is filed within 12 months of the provisional and the invention is disclosed sufficiently in the provisional application to teach someone skilled in the relevant art how to make and use the invention without undue experimentation.

Generally, the more different a provisional application is from the later-filed utility application, the less likely the claims are to be supported by the provisional, which means that claims lacking support will not be afforded the earlier filing date.

Provisionals start many clocks 

Domestic utility applications as well as foreign ones need to be filed within one year after the provisional application. Provisional applications are not included in the calculation of the term of patents that issue from the utility application that claims priority to the provisional. Provisional applications do, however, establish the effective filing date of the utility application for the purpose of defining prior art. This effectively increases the term of patent protection by up to one year.

Use it or lose it

Unlike utility applications, which may be revived after they are abandoned for certain reasons, U.S. patent law does not provide any revival for expired provisional applications. Whether or not a utility application is filed later, the provisional application will be abandoned one year after it is filed. A particular provisional application can never be filed again.

What can be even more damaging to inventors is the prospect of having their provisional application cited against them in a later utility application. Patent applications are published 18 months after they are filed. This means that if a utility application or foreign-filed application that claims the benefit of the provisional application is not filed, the information in the provisional will be deemed public. While there are ways to prevent the publication of an application for which no foreign rights will be sought, some inventors fail to take the necessary steps to avoid publication of their applications.

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