Provisional Applications Circular

Notaro, Michalos & Zaccaria P.C. A law firm specializing in patents, trademarks and copyrights

PROVISIONAL PATENT APPLICATIONS

As of June 8, 1995, pursuant to new paragraph (b) of 35 U.S.C. §111, an inventor may file a provisional application with the United States Patent and Trademark Office for a fee of $210.00, reduced by half for small entities. Provisional applications are not available for designs.

A provisional application requires: an enabling description of the best mode of the invention, drawings where necessary to understand the invention, the names of the inventor(s), the appropriate filing fee, and a cover sheet identifying the application as provisional. The application may be filed in a foreign language, although a translation will be required to be filed.

Missing parts may be filed at a later time, when accompanied by the appropriate fee. However, care should be taken to include all the necessary parts upon filing, as an application filed without the cover sheet identifying the application as provisional will be examined as a conventional utility application.

Claims, an oath or declaration, and a power of attorney are not required in a provisional application, although some or all of these may be included when it is filed. If claims are filed as a part of a provisional application, they may be used to help determine compliance with the enabling requirement of 35 U.S.C. §112.

A filing date will be accorded a provisional application, based on the effective date the specification and drawings filed in the name of at least one inventor are received by the Patent and Trademark Office. Missing parts are required to be filed to maintain the application. A filing receipt will be issued for the application.

The filing date may be relied upon for later, conventional patent applications for domestic or foreign priority. A provisional application may not, however, claim the priority of another, earlier filed application of any type.

A later filed conventional application claiming the priority of the provisional application that issues as a patent calculates its expiration date from the filing date of the conventional application, not the provisional application filing date. That is, under the new twenty years from filing patent term rule, the filing date used to determine the expiration of the patent is the filing date of the earliest filed non-provisional application. Thus, up to one additional year in which no prosecution of the application has taken place may be added to the pendency of the application without subtracting from the patent term.

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However, filing a provisional application does begin the one year time period (Paris Convention priority year) in which foreign filings based on the application must be filed. Accordingly, the applications are reviewed, and a foreign filing license may issue.

A provisional application is automatically abandoned 12 months from the filing date, regardless of whether that date falls on a weekend or holiday. The application is maintained in secrecy like all other applications filed with the PTO, and subject to the same exceptions to secrecy, even following the automatic abandonment.

Provisional applications are not examined, except when it is necessary for an examiner to determine when an applicant is entitled to the claim of priority based on the provisional application, or for determining the date of filing of an application on which a patent was granted in order to assess the novelty of another application, in accordance with §102(e).

The provisional application is generally accepted to be most beneficial to a small inventive entity, or non-profit inventor due to its low cost, minimal legal requirements and the extra within which to determine the marketability, obtain financial backing and/or license the invention. The time during the pendency of the provisional application allows the inventors to mark the invention “patent pending”, despite the fact that the provisional application will not itself mature into a patent. Also, a provisional application may be assigned or sold, similar to a conventional patent application, giving the small inventor a marketable right. And, it does not affect the term of a patent claiming it as priority.

Foreign applicants can also benefit by obtaining earlier dates for avoiding prior art bars in the United States and with less effort than a conventional application requires, since the initial provisional application may be filed in the applicant’s own language. This is because although 35 U.S.C. §119(a) allows a claim of foreign priority, the application may still be barred by a publication anywhere more than one year prior to the earliest U.S. filing date, regardless of the foreign priority date. Thus, a U.S. provisional application filed simultaneously with a foreign applicant’s home application would prevent such a bar from arising.

For larger, domestic inventive entities, or inventors who desire to obtain a patent as quickly as possible, the provisional application has few, if any, benefits. The term of patent is not affected by filing the provisional application but the provisional application is not examined and cannot itself mature into a patent. Thus, time which could be spent in prosecution of a conventional application resulting in a grant of patent rights is lost while the invention may be sold, hit its peak market share and begin to fade even before the provisional application is automatically abandoned or a conventional application claiming priority is filed.

The primary benefit of a provisional application to an aggressive applicant is it provides a simple filing which can be used to avoid a prior art bar date, such as the bar arising from the invention being on sale for more than one year prior to filing. By filing a provisional application fully disclosing the invention, the applicant can establish a filing date which negates the effect of the prospective prior art bar, and from which a later filed conventional application containing claims and a properly executed oath or declaration may claim priority. As long as the provisional application contains an enabling specification and drawings, a timely critical date can be established, giving the applicant sufficient time to prepare claims or obtain the signatures required for an oath or declaration.

Thus, each applicant should determine his or her goals for obtaining a patent and marketing their invention before deciding if a provisional application is appropriate to suit their needs.