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When did the U.S. Patent and Trademark Office begin the "provisional" patent application?

Since June 8, 1995, the U. S. Patent and Trademark Office (PTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

What is a "provisional" patent application?

A provisional application for patent is a U.S. national application for patent filed in the PTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides the means to establish an early effective filing date in a patent application and allows the term "Patent Pending" to be applied.

What are the benefits of filing a "provisional" patent application?

There are several benefits to filing a provisional patent application. Below is a listing of benefits that are recognized by the USPTO:

How long does a provisional patent application provide "patent pending"?

The period of up to one year of pendency for the provisional application is excluded from the term calculation of a granted patent that relies upon the provisional application for patent, thus providing a term endpoint that is 21 years from the provisional application filing date.

Do I have to have professional patent drawings completed for my provisional patent application?

You do not need professional patent drawings for a provisional application. However, if your sketches are not adequate to fully illustrate your invention, then a professional draftsperson should be hired to prepare your drawings.

When does a provisional patent application become "expired"?

If the inventor takes no further action, the application will automatically be abandoned 12 months after the provisional application for patent's filing date by operation of law or upon failure to correct informalities (e.g., pay filing fee or correct cover sheet error).

Can I revive an abandoned provisional patent application?

No. Once a provisional patent application is automatically abandoned 12 months after the filing date it is non-revivable and you will not be entitled to the filing date of the provisional patent application.

Should I consult with a patent attorney before and after filing a self-drafted provisional patent application?

It is strongly recommended that inventors consult with a registered patent attorney or agent before and after filing a provisional patent application. A list of patent attorneys and agents, listed alphabetically by geographic region, who are registered to practice before the PTO can be obtained from the U.S. Government Printing Office at the following address or website:

Superintendent of Documents
P. O. Box 371954
Pittsburgh, PA 15250-7954
Telephone: 202-512-1800

www.uspto.gov


When must I file a "formal" patent application (i.e. non-provisional)?

The §111(a) non-provisional application for patent must be filed within 12 months of the provisional application for patent filing date to claim the benefit of the provisional application filing date. As always, consult with a patent attorney if you should have any questions.

Do I need to identify all of the inventors in the provisional patent application?

Yes. The provisional application for patent must be made in the name(s) of all of the inventor(s). The inventor(s) named in the provisional application for patent must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the application.

When can I file a provisional patent application?

It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (Note: These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.) You should consult with a patent attorney if you should have any questions.

What is required within the provisional patent application to receive a "filing date"?

A filing date will be accorded to a provisional application for patent only when it contains:
  1. a written description of the invention, complying with all requirements of 35 U.S.C. §112 ¶ 1;
  2. any drawings necessary to understand the invention, complying with 35 U.S.C. §113; and
  3. the names of all inventors.
If any of these three items are missing or incomplete, no filing date will be granted. To be complete, a provisional application for patent must also include:
  1. the filing fee as set forth in 37 CFR 1.16(k) and
  2. a cover sheet identifying the application as a provisional application for patent.
The cover sheet is required so as to distinguish the provisional application for patent from other applications and documents filed in the PTO. The cover sheet provides all of the information needed to process the provisional application promptly and properly and prepare the filing receipt. A sample cover sheet is available from the PTO. Use of the PTO's cover sheet is not mandatory, however, as the cover sheet requirements pertain to content, not format. The cover sheet must identify:

Are provisional patent applications examined by the USPTO?

No.  While a provisional patent application provides "patent pending", provisional patent applications are not examined on their merits.

Can a provisional patent application by itself issue into a U.S. patent?

No. A formal (non-provisional) patent application must be filed in order to receive a U.S. patent for your invention. It is recommended that inventors hire a patent attorney to draft the formal patent application.

When can I claim the benefits of a provisional patent application?

The benefits of the provisional application for patent cannot be claimed if the one year deadline for filing a non-provisional application for patent is missed. If the one year deadline for filing falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the non-provisional application must be filed the next business day in order to be co-pending with the provisional application. Provisional applications for patent cannot claim the benefit of a previously filed application, either foreign or domestic. It is recommended that the disclosure of the invention in the provisional application for patent be as complete as possible. In order to obtain the benefit of the filing date of a provisional application for patent the claimed subject matter in the later filed non-provisional application must have support in the provisional application for patent. The non-provisional application for patent must have one inventor in common with the inventor(s) named in the provisional application for patent to claim benefit of the provisional application filing date. A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim the benefit of that provisional application. A CAFC decision recently handed down specifically addresses "priority" issues involving earlier filed "provisional" patent applications. In New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co., 298 F.3d 1290, 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002). The CAFC said: "As a part of the Uruguay Round Agreements Act, the Patent Statute was amended to allow applicants for United States patents to file provisional applications that could provide the priority date for a non-provisional utility application filed within one year of the provisional. See 35 U.S.C. 111(b). Such a provisional application need only include a specification conforming to the requirements of 35 U.S.C. 112.1 and at least one drawing filed under Sect. 113; no claims are required. 35 U.S.C. 111(b)(1), (2). However, for the non-provisional utility application to be afforded the priority date of the provisional application, the two applications must share at least one common inventor and the written description of the provisional must adequately support the claims of the non-provisional application". Though this case discloses nothing "new" for individuals/entities experienced with provisional patent applications, it is a good "reminder" that a provisional patent application needs to be prepared to the same level/quality as a non-provisional patent application.

Do I need to include at least one "claim" within my provisional patent application for foreign priority purposes?

No. Some individuals feel that some foreign countries may not recognize a provisional patent application filed without claims. However, we are unaware of any case law or statute in a foreign country that would require the usage of a "claim" within a U.S. provisional patent application. In fact, adding a claim to a provisional patent application may create potential problems for future patents that claim priority from the provisional patent application based upon "prosecution history estoppel" arguments. A well-known authority on International Patent Law states: "The World Intellectual Property Organization (WIPO), the responsible administrative agency for the Paris Convention, and the European Patent Office, moreover, have taken the position that provisional United States patent applications are regular national filings under Article 4 of the Paris Convention and are as a consequence adequate to establish a priority date." BAXTER, WORLD PATENT LAW & PRACTICE (December 2001). BAXTER further states: "[T]he European Patent Office has acknowledged that the U.S. provisional application gives rise to a right of priority within the meaning of Article 87(1) EPC. Similarly, the International Bureau also has taken a position that a United States provisional application is adequate to support a claim to priority for an international patent application filed under the Patent Cooperation Treaty. Similarly, the International Bureau also has taken a position that a United States provisional application is adequate to support a claim to priority for an international patent application filed under the Patent Cooperation Treaty. The Japanese Patent Office officially declared that a U.S. provisional application will be considered to provide a basis from which a right of priority can be claimed under the Paris Convention." BAXTER continues to state: "Provisional applications, although not published, and never, directly, form the basis for a granted patent, provide a basis for internal priority for a subsequent regular United States patent application and under the European Patent Convention and the Patent Cooperation Treaty authorities form a basis for convention priority. Other countries recognize a provisional application for claiming priority (e.g., Taiwan), for more details on this, see Chapter 10." BAXTER further states: "Sections 111 and 119 of the patent law are amended to now provide for filing a provisional application. The intent is to establish a system of domestic priority which will place U.S. citizens on equal footing with foreign applicants who benefit from a foreign priority date but only have the patent term measured from the U.S. filing date, not the foreign priority date. The provisional application permits U.S. applicants to have the term of their patent measured from the filing date of a ``regular'' application, not a provisional application. Thus, the provisional filing does not serve as the basis from which the term of the patent is measured." It should also be noted that Section 4801(a) of the "American Inventors Protection Act of 1999" amends 35 U.S.C. 111(b)(5) to provide that "[n]otwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under [35 U.S.C. 111(a)]." This clearly supports the position that a PPA should be considered as a formal patent application for foreign priority purposes. Finally, including a "super broad" claim in a provisional application may result in the implication of Festo when a non-provisional is later filed with a narrower claim scope. See Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314 (Fed. Cir. 2003). Deering involved the deletion of a broad claim and the adding of a new narrower claim within the same non-provisional application. Even though Deering did not involve a provisional application, there is the real potential that a similar situation could occur where a later filed non-provisional application includes a narrower claim than the claim in the provisional (i.e. effectively deleting the broader claim and inserting a narrower claim). You should consult with a patent attorney before including a claim within a provisional patent application.

Can I file a provisional patent application for a "design" patent?

No. Provisional applications for patent may not be filed for design patents, only utility patents. Design patents only protect the overall appearance of your invention while utility patents protect the function and structure of your invention. Utility patents are the most common type of patent issued by the USPTO as they generally provided broader protection for most inventions. See Neustel Law Offices website more information on the differences between a design patent and a utility patent.

Can I amend my provisional patent application after filing?

No. Amendments are not permitted in provisional applications for patent after filing, other than those to make the provisional application comply with applicable regulations. You can simply refile the original provisional application with the amendments as a second provisional patent application (see next question below).

What should I do if I make improvements to my invention after filing my provisional patent application since I cannot amend the original application?

You should file another provisional patent application to include the new subject matter (i.e. improvements).

Can I file an information disclosure statement (IDS) with the provisional patent application?

No. Filing of an information disclosure statement in a provisional application for patent is prohibited.

Is the filing date of the provisional patent application my "priority date" for filing foreign patent applications?

Yes. If you filed a provisional application, your one-year period dates from the filing of the provisional application, not the regular utility patent application. If you are considering foreign patent protection you should speak with a patent attorney prior to filing your provisional patent application.
* GOVERNMENT FEES NOT INCLUDED: The costs above do NOT include the government filing fee.

IMPORTANT NOTICE:
This web site provides general information only, not legal advice. You should not act upon this information without independent legal counsel. Provisional patent applications automatically expire after one-year from the filing date and you need to file a non-provisional during this one-year period of patent pending to claim priority to the provisional patent application. SmartPatent.com is owned and operated by Neustel Law Offices, LTD. Neustel Law Offices, LTD and Neustel Software, Inc. are both owned by Michael Neustel who is a U.S. Patent Attorney. PatentWizard Online is a product of Neustel Software, Inc. and was created by Michael Neustel. Neustel Law Offices, LTD performs all patent services offered on this website. A business day is any normal work day excluding weekends and holidays. Never rely soley on free patent forms or patent it yourself software - you should always consult a patent attorney prior to preparing and filing a patent application yourself. SMARTPATENT and the SmartPatent logo are trademarks of Neustel Law Offices, LTD.