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Definition A utility provisional patent application is the most misused element of the US patent system and the largest cause of the loss of patent rights for inventors. A provisional application is a temporary patent application that only lasts 12 months from its filing date. A provisional application is never reviewed or examined during its 12 month lifetime and it never issues as any kind of provisional patent. A provisional application requires the filing of a non-provisional patent application (also called a regular patent application) which is fully supported (has the same content) by the provisional application within the 12 months of the provisional application filing date or the provisional filing date and all benefits from the provisional application are lost. When the regular application is reviewed (on average 24 months after filing the regular application), the examiner will review the provisional application for completeness and for support for the regular application. If either are missing, the provisional is invalidated and all benefit is lost.While a provisional application requires the same content for scope, making and using an invention as a regular application and must fully support the regular application to prevent being invalidated by an examiner, a provisional application allows content presentation, including drawings, in an informal manner. A provisional application is occasionally a good tactic but it usually is not a good choice unless certain conditions exist as discussed below. Considering that a provisional application whose content is compliant with all the rules (i.e. is well written) requires a thorough and experienced understanding of patent law and the writing of patent applications, its preparation should never be considered or attempted without at least advice of a professional.
The Provisional Application Trap The big trap of the provisional application system is that the US Patent Office allows anyone to file literally anything as a provisional application and initially be given a filing date and assigned a serial number (and thus given "patent pending" status). The Patent Office has allowed this because of the informal nature of a provisional application. However, the Patent Office accepting your initial filing and you being allowed to keep the provisional application filing date, patent pending status, and the protection that the provisional application provides are two different things. It is easy for someone to believe that because you have a filing date and serial number, that you are protected until a regular application is filed and that the date of filing of the provisional application is irrevocable once issued. It is also easy to believe a provisional with minimal information at worse will give some protection and that missing items can be provided in the regular application.This is simply NOT the case and a provisional application requires specific minimum content to prevent invalidation. Since the Patent Office does not review a provisional application for that required minimum content or compliance with the rest of the rules for provisional patent applications during the 12 months the provisional application is pending, the danger is that you will not find out till well after filing of a regular application that your initial provisional application filing date is irrevocably lost and your patent rights are either seriously impaired or lost altogether long afer there is any chance to correct. It is a patent myth and completely erroneous that a short provisional application (less content than a regular application) can be filed and that such an application would provide you any protection whatsoever while waiting to file a regular application. Therefore, it is also wrong that there is money to be saved by writing a shorter provisional application. The money saving, if any, in using a provisional application comes from the lower filing fee, less formal Patent Office paperwork, and the ability to use informal drawings and an informal style to the content of a provisional application. Although, it should be noted that the provisional application's informal style often leads to more information being necessary in the provisional application rather than less to provide enough content. This occurs much like the collecting of research information for publishing a paper. While the information collected is usually an informal collection of information, it is much longer than the final well written article based on the collected information. More often than not the safest method for writing a provisional application is to use the formal style for the text so that nothing is missed and perhaps leaving only the drawings in an informal (hand drawn) style. However, since when filing a provisional application, the regular application and all the filing fees and formal drawings must still be paid and filed within a year's time, it is always the case that the total cost of obtaining a patent using a provisional as a first application is higher than filing a regular application as a first patent application.
What REALLY needs to be in a Provisional Application? Both the Patent Office and the Supreme Court state that in order for you to keep the filing date of a provisional application and to use the provisional application as a priority document for the content of a later filed regular application, a provisional application must contain the following content in both the provisional and non-provisional applications:
If content complying with either of these rules is missing or incomplete in a provisional application, then the filing date of a provisional application will be lost forever. It should be noted that this content requirement is identical for both a provisional application and a regular application. See the US Patent Office web site for a detailed explaination of the legal requirements at www.uspto.gov/web/offices/pac/provapp.htm. While no formal "claims" are required for a provisional application according to some web sites, many attorneys (including this office) feel that at least one claim needs to be filed in a provisional application. This is because the rules cited above require, among other information, that the content of any patent application contain a complete description of how to make and use every embodiment of the claimed invention. Without a "claim" of the invention in the provisional application, it is hard to see how one could ever comply with that test. We recommend that all provisional applications have at least one broad claim but prefer they contain a complete set of claims.
When is it good to file a provisional application? One benefit to filing a provisional application is that the expiration date of a patent that issues from a regular application claiming priority to the provisional application is 21 years from the provisional date rather than just 20 years from a regular application filed as the first application. However, since the examination process is delayed for a year with a provisional application, the total time an issued patent remains enforceable is the same regardless of which type of application you file first. The only difference is that the start date and end dates are just shifted by a year. Therefore, if it is better that you obtain an issued patent sooner, then you should file a regular application first. If you would rather have the patent issue a year later but get that year added to the end, a provisional application should be considered. Again, we recommend the provisional application look just like the regular application with all its formalities. Passe Intellectual Property frequently files a provisional application with little or no modification compared to the regular application since the provisional application was written in a formal style with all the content necessary for the regular application filing.
One other time that you might consider filing a provisional application is when there is a fixed urgent deadline for publishing of a technical description, a talk, or an article is about to occur, AND one or more foreign patent applications will be filed. A copy of the article or talk could be filed, however, the informal provisional application should be followed up with a complete provisional, or a regular application as soon as possible since its only value in these cases is to prevent your publication from being used against you and not to obtain an initial filing date. This is one of the instances where filing a provisional application with more information (albeit informally) than a corresponding regular application is probably critical.
The last time a provisional application might be considered is when the initial cost savings (which in certain instances can run from a couple hundred dollars to as much as a thousand dollars) which comes from a lower filing fee, less filing paperwork to be completed by a patent professional, and informal drawings (not requiring a draftsman) is worth it for the first year. This has to be balanced against the fact that after no more than a year the regular application and all its associated costs for filing and formal drawings must be paid in addition to the provisional patent application costs, thus increasing the total cost of filing over filing a regular application alone.
What should i do next? The provisional patent application is clearly an area fraught with complexity and dangers. If you wish to have a more detailed discussion of provisional applications and how they should or shouldn't be used with your particular invention, or if you already have a provisional application filed and are wondering what to do next, we recommend talking to us using our free, no obligation consultation service with a patent attorney at This e-mail address is being protected from spambots. You need JavaScript enabled to view it or 919-256-8196.
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What is a Provisional utility patent application?
