The United States Patent and Trademark Office (USPTO) presents inventors with a cost-efficient and strategic avenue for patent protection via provisional patent applications. This method offers U.S. inventors a more affordable initial filing and brings them in line with foreign applicants under international agreements. A provisional patent application, filed according to 35 U.S.C. §111(b), doesn’t demand formal patent claims, an oath or declaration, or an information disclosure (prior art) statement since it isn’t examined.  

Establishing an Early Filing Date

A provisional application plays a crucial role in setting an early effective filing date for a subsequent non – provisional patent application filed under 35 U.S.C. §111(a). This enables the use of the term “Patent Pending” when describing the invention. The validity period of a provisional application lasts for 12 months from the filing date, and this period cannot be extended. To take advantage of the early filing date, a corresponding non-provisional application must be submitted within this 12-month timeframe. In cases where a non-provisional application is filed between 12 and 14 months after the provisional application, the benefit can be restored by filing a petition under 37 CFR 1.78, proving that the delay was unintentional and paying the required fee.  

Non-provisional Application Reference

As per 35 U.S.C. §119(e), the non-provisional application has to make a reference to the provisional application. For applications filed on or after September 16, 2012, this reference should be included in an application data sheet. The claim for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application and within four months of its filing date or sixteen months of the provisional application’s filing date, whichever comes later.  

Converting to a Non-provisional Application

Instead of filing a corresponding non-provisional application, it’s possible to convert the provisional application into a non-provisional one. This can be done by filing a petition under 37 C.F.R. 1.53(c)(3) within 12 months of the provisional application’s filing date. However, this conversion might have a negative impact on the patent term, as it is calculated from the original provisional application’s filing date.  

Filing Date Requirements

A provisional application must contain the name(s) of the inventor(s). It can be filed up to 12 months after the inventor publicly discloses the invention. Any public disclosures made more than one year before the filing date would prevent patenting in the United States. A filing date is granted when the application includes a written description of the invention that complies with 35 U.S.C. §112(a). It is advisable to submit any necessary drawings to help understand the invention, in accordance with 37 CFR 1.53(c).  

Completing the Provisional Application

A fully-fledged provisional application must include the filing fee as stipulated in 37 CFR 1.16(d) and a cover sheet. The cover sheet should identify the application as provisional, list the inventor’s name(s) and residence(s), the title of the invention, details of the attorney or agent, the correspondence address, and any U.S. Government agency that has a property interest in the application.  

Cautions and Considerations

If the 12-month deadline for filing a non-provisional application has passed, the benefits of a provisional application cannot be claimed, unless the benefit is restored under 37 CFR 1.78. A provisional application won’t result in a U.S. patent unless a corresponding non-provisional application is filed or a petition to convert is approved. Design inventions, unexamined applications, and applications claiming benefits from previous filings are not permitted. It is recommended that the disclosure in the provisional application be as comprehensive as possible to support the claimed subject matter in the non-provisional application.

Filing the Provisional Application

The provisional application, along with the filing fee and the cover sheet, can be submitted either electronically using Patent Center or by mail. Electronic filing through Patent Center is secure, allows for real-time payment processing, and automatically loads data into USPTO systems. If mailed, it should be sent to the Commissioner for Patents at the specified address.  

Advantages of Provisional Applications

Provisional applications offer a streamlined filing process with a lower initial investment. They give inventors 12 months to evaluate the commercial potential of their invention before incurring higher costs. They establish an official U.S. patent application filing date, allow the use of “Patent Pending” for 12 months, and initiate the Paris Convention priority year. This approach allows for immediate commercial promotion with enhanced security against invention theft and enables applicants to obtain USPTO certified copies.  

Warnings for Inventors

A provisional application will automatically be abandoned after 12 months if a non-provisional application claiming the provisional application’s filing date is not filed. Public disclosures during this period may lead to the loss of the right to patent the invention. Independent inventors should be aware that a provisional application requires further submissions to develop into a granted patent.  

Contact Information

For queries regarding regulations or procedures, one should contact the Office of the Deputy Commissioner for Patent Examination Policy. For legislative changes, reach out to the Office of Policy and External Affairs. The Inventors Assistance Center (IAC) offers patent information and services to the public, answering general questions about patent examining policy and procedure. Additional copies of the brochure or more information can be obtained by contacting the USPTO Contact Center.   In conclusion, provisional patent applications offer a strategic and cost-effective way for inventors to secure early filing dates and assess the commercial potential of their inventions before committing to the higher costs associated with non-provisional applications. It is essential for inventors to understand the requirements, benefits, and limitations of provisional applications to make informed decisions about their intellectual property protection.  

Source: https://www.uspto.gov/patents/basics/apply/provisional-application  

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