Provisional application
Encyclopedia
Under United States patent law
, a provisional application for patent
is a legal document
filed in the United States Patent and Trademark Office
(USPTO), that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application
within one year. There is no such thing as a "provisional patent".
A provisional application includes a specification, i.e. a description, and drawing
(s) of an invention
(drawings are required where necessary for the understanding of the subject matter sought to be patented), but does not require formal patent claim
s, inventors' oaths or declarations, or any information disclosure statement
(IDS). Furthermore, because no examination of the patentability
of the application in view of the prior art
is performed, the USPTO fee for filing a provisional patent application is significantly lower (USD 125 as of September 2011) than the fee required to file a standard non-provisional patent application. A provisional patent application can establish an early effective filing date in one or more continuing patent application
s later claiming the priority date
of an invention disclosed in earlier provisional applications by one or more of the same inventors.
The same term is used in past and current patent laws of other countries with different meanings.
. A 12-month benefit of priority to foreign-filed applications had been a part of U.S. patent law since the 1901 U.S. ratification of the Brussels revision of the Paris Convention for the Protection of Industrial Property
. The 1994 introduction of the provisional application thus provided a domestic filing equivalent matching the 12-month priority benefit that had been afforded to foreign applications for the better part of the 20th century.
is about to expire and there is insufficient time to generate a complete non-provisional application. In many cases, a provisional is filed the same day as a public disclosure of the invention, which disclosure could otherwise permanently jeopardize the patentability in non-U.S. countries having strict requirements on "complete or absolute novelty
". In other cases the provisional application is filed soon after such a disclosure in order to preserve only the inventor's U.S. patent rights.
The date of filing of the provisional patent application can also be used as the foreign priority
date for applications filed in countries other than the United States and for an international application
, but not for a design patent
. The filing of a provisional application triggers a review period for the U.S. license necessary for the subsequent foreign or international filings. Though the "provisional" need not be submitted in English
, a translation will be required when (and if) a non-provisional application claims the benefit of the provisional.
A provisional application, as such, is never examined
by the USPTO, and therefore can never become a patent. It is also not "published", but will become a part of any later non-provisional application file that references it, and thus becomes "public" upon issuance of a patent claiming its priority benefit.
A "provisional" is automatically abandoned (expires) one year after it is filed. The provisional filing date is not counted as part of the 20-year life of any patent
that may issue with a claim to the provisional filing date.
The United States Patent and Trademark Office (USPTO) announced on December 8, 2010, that it was implementing a Missing Parts Pilot Program. This pilot program would provide applicants with a 12 month extension to the existing 12 month provisional application period. This pilot program would not change the requirement for an applicant to file a non-provisional application within 12 months; though it would allow additional time to reply to a missing parts notice.
The provisional patent application is only pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application claiming the benefit of the provisional application must be done within 12 months. Otherwise, the rights to claim the benefit of provisional application are lost.
Such non-provisional application also must name at least one inventor common to those named in the "provisionals", and must claim the inventor's invention as disclosed in the "provisionals".
If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases). However, the original priority date of any expired provisional applications will be forfeited.
The provisional priority date is of little consequence for any claims in the issued patent that are not supported by the disclosure in the priority document. This makes it very important that provisional applications be sufficiently detailed
. Otherwise, the validity of an issued patent may be challenged as to the priority date of its claims that purport to relate back to an insufficient "provisional". Furthermore, during the year after filing the first provisional (and prior to filing a non-provisional application), it may be useful to file additional provisional applications as improvements are made, and then claim priority of those found useful in drafting the non-provisional application(s).
One popular use of a provisional application is to document and "lock in" potential patent rights while attempting to obtain sponsors for further development (and for more expensive patent applications). This tactic may permit an inventor to defer major patent application costs until the commercial viability (or futility) of the invention becomes apparent. However, wise investors consider provisional applications in view of the long road to potential patentability, not to mention the limitations that may be defined by the prior art
.
Information Disclosure Statements (IDSs) are not permitted in provisional applications. Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.
The advantages of a provisional patent application are:
As of September 26, 2011 the USPTO small-entity filing fee is $125 for provisional patent applications having 100 or fewer pages of specification and drawings and complexity involved for a provisional patent on the part of both the applicant and the USPTO is generally much less than that of a non-provisional patent application. Thus, it is possible to file a provisional patent application more quickly and cheaply than a non-provisional patent application.
It is also possible to convert a non-provisional application into a provisional, under limited circumstances (e.g., within a year of filing, when the applicant discovers a reason not to pursue the present non-provisional application).
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, a provisional application for patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
is a legal document
Legal instrument
Legal instrument is a legal term of art that is used for any formally executed written document that can be formally attributed to its author, records and formally expresses a legally enforceable act, process, or contractual duty, obligation, or right, and therefore evidences that act, process, or...
filed in the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO), that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
within one year. There is no such thing as a "provisional patent".
A provisional application includes a specification, i.e. a description, and drawing
Patent drawing
A patent application or patent may contain drawings, also called patent drawings, illustrating the invention, some of its embodiments , or the prior art...
(s) of an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
(drawings are required where necessary for the understanding of the subject matter sought to be patented), but does not require formal patent claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s, inventors' oaths or declarations, or any information disclosure statement
Information disclosure statement
An information disclosure statement refers to a submission of relevant background art or information to the United States Patent and Trademark Office by an applicant for a patent during the patent prosecution process...
(IDS). Furthermore, because no examination of the patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
of the application in view of the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
is performed, the USPTO fee for filing a provisional patent application is significantly lower (USD 125 as of September 2011) than the fee required to file a standard non-provisional patent application. A provisional patent application can establish an early effective filing date in one or more continuing patent application
Continuing patent application
Under United States patent law, a continuing patent application is a patent application which follows, and claims priority to, an earlier filed patent application....
s later claiming the priority date
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
of an invention disclosed in earlier provisional applications by one or more of the same inventors.
The same term is used in past and current patent laws of other countries with different meanings.
History
The provisional application was introduced to U.S. patent law with a 1994 amendment of the Patent Act of 1952Patent Act of 1952
The U.S. Patent Act of 1952 clarified and simplified existing U.S. patent law. It also effected substantive changes, including the incorporation of the requirement for invention and the judicial doctrine of contributory infringement The U.S. Patent Act of 1952 clarified and simplified existing...
. A 12-month benefit of priority to foreign-filed applications had been a part of U.S. patent law since the 1901 U.S. ratification of the Brussels revision of the Paris Convention for the Protection of Industrial Property
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property...
. The 1994 introduction of the provisional application thus provided a domestic filing equivalent matching the 12-month priority benefit that had been afforded to foreign applications for the better part of the 20th century.
Characteristics
The earliest filing date of a "provisional" (application) may be very important where, for example, a statutory condition of patentabilityPatentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
is about to expire and there is insufficient time to generate a complete non-provisional application. In many cases, a provisional is filed the same day as a public disclosure of the invention, which disclosure could otherwise permanently jeopardize the patentability in non-U.S. countries having strict requirements on "complete or absolute novelty
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
". In other cases the provisional application is filed soon after such a disclosure in order to preserve only the inventor's U.S. patent rights.
The date of filing of the provisional patent application can also be used as the foreign priority
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property...
date for applications filed in countries other than the United States and for an international application
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
, but not for a design patent
Design patent
In the United States, a design patent is a patent granted on the ornamental design of a functional item. Design patents are a type of industrial design right. Ornamental designs of jewelry, furniture, beverage containers and computer icons are examples of objects that are covered by design...
. The filing of a provisional application triggers a review period for the U.S. license necessary for the subsequent foreign or international filings. Though the "provisional" need not be submitted in English
English language
English is a West Germanic language that arose in the Anglo-Saxon kingdoms of England and spread into what was to become south-east Scotland under the influence of the Anglian medieval kingdom of Northumbria...
, a translation will be required when (and if) a non-provisional application claims the benefit of the provisional.
A provisional application, as such, is never examined
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
by the USPTO, and therefore can never become a patent. It is also not "published", but will become a part of any later non-provisional application file that references it, and thus becomes "public" upon issuance of a patent claiming its priority benefit.
A "provisional" is automatically abandoned (expires) one year after it is filed. The provisional filing date is not counted as part of the 20-year life of any patent
Term of patent in the United States
In the United States, under current patent law, the term of patent, provided that maintenance fees are paid on time, are:* For applications filed on or after June 8, 1995, the patent term is 20 years from the filing date of the earliest U.S...
that may issue with a claim to the provisional filing date.
The United States Patent and Trademark Office (USPTO) announced on December 8, 2010, that it was implementing a Missing Parts Pilot Program. This pilot program would provide applicants with a 12 month extension to the existing 12 month provisional application period. This pilot program would not change the requirement for an applicant to file a non-provisional application within 12 months; though it would allow additional time to reply to a missing parts notice.
Procedure and benefits
To obtain the benefit of the "provisional" filing date, a non-provisional patent application must be filed, claiming benefit of the filing date of one or more specific provisional patent applications, prior to their expiration.The provisional patent application is only pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application claiming the benefit of the provisional application must be done within 12 months. Otherwise, the rights to claim the benefit of provisional application are lost.
Such non-provisional application also must name at least one inventor common to those named in the "provisionals", and must claim the inventor's invention as disclosed in the "provisionals".
If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases). However, the original priority date of any expired provisional applications will be forfeited.
The provisional priority date is of little consequence for any claims in the issued patent that are not supported by the disclosure in the priority document. This makes it very important that provisional applications be sufficiently detailed
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
. Otherwise, the validity of an issued patent may be challenged as to the priority date of its claims that purport to relate back to an insufficient "provisional". Furthermore, during the year after filing the first provisional (and prior to filing a non-provisional application), it may be useful to file additional provisional applications as improvements are made, and then claim priority of those found useful in drafting the non-provisional application(s).
One popular use of a provisional application is to document and "lock in" potential patent rights while attempting to obtain sponsors for further development (and for more expensive patent applications). This tactic may permit an inventor to defer major patent application costs until the commercial viability (or futility) of the invention becomes apparent. However, wise investors consider provisional applications in view of the long road to potential patentability, not to mention the limitations that may be defined by the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
.
Information Disclosure Statements (IDSs) are not permitted in provisional applications. Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.
The advantages of a provisional patent application are:
- ease of preparation,
- lower cost, and
- the ability to use the term "patent pending", which can only be legally used when a patent application has been filed, and which may have significant marketing advantages.
As of September 26, 2011 the USPTO small-entity filing fee is $125 for provisional patent applications having 100 or fewer pages of specification and drawings and complexity involved for a provisional patent on the part of both the applicant and the USPTO is generally much less than that of a non-provisional patent application. Thus, it is possible to file a provisional patent application more quickly and cheaply than a non-provisional patent application.
It is also possible to convert a non-provisional application into a provisional, under limited circumstances (e.g., within a year of filing, when the applicant discovers a reason not to pursue the present non-provisional application).
See also
- Continuing patent applicationContinuing patent applicationUnder United States patent law, a continuing patent application is a patent application which follows, and claims priority to, an earlier filed patent application....
- Patent caveatPatent caveatA patent caveat was a legal document filed with the United States Patent Office. Caveats were instituted by the US Patent Act of 1836, but were discontinued in 1909. A caveat was like a patent application with a description of an invention and drawings, but without claims. It was an official...
- Provisional rights
- Patent pendingPatent pendingThe expressions "patent pending" or "patent applied for" refer to a warning that inventors are entitled to use in reference to their product or process once a patent application has been filed, but prior to the patent being issued or the application abandoned...
External links
- Provisional Application for Patent at the USPTO.