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What is a Provisional Patent Application. A
provisional patent application is an informal means to obtain a filing
date for a "non-provisional" utility application that is filed
within one year. In some instances, a provisional patent application might
consist of a technical paper fully describing the invention. Once filed,
the date of filing may become the "priority date" (the effective
filing date) for patent protection, but only if
done correctly.
What do you mean "only
if done correctly?" The
technical description for a provisional must be "enabling" and
must disclose all the components of the invention to be subsequently
claimed by the non-provisional application. Otherwise, its usefulness may
turn into a trap that causes a complete loss of patent rights.
Informality of a Provisional Patent Application.
The requirements for filing a provisional application are informal in
comparison to a "non-provisional" utility patent
application. For instance, a provisional application does not
require claims and may be filed with rough hand drawn drawings that would
not be accepted in a non-provisional application.
Provisional Application. A provisional
application is a relatively inexpensive ($125 for filing plus $900 for
preparation fees) means to get "patent pending" protection on an invention
up to 1 year prior to filing a regular (non-provisional) patent
application. USPTO filing fees are double ($250) for
large entities. It is only useful to get the protection of the earlier
filing date if a non-provisional application is filed within that year.
This price assumes no substantive editing of your invention disclosure.
Non-disclosure Agreement. Using a
non-disclosure agreement (NDA) to maintain secrecy about the details of
your invention with any third party is recommended during the
pendency of a provisional application because it enables more filing
options. For example, for filing an international patent application
(PCT application) within two years after the provisional in certain
circumstances. Such circumstances occur when you do not need to claim the
earlier provisional filing date because the invention is still new and
innovative at the time of filing the non-provisional application, and when
the invention was not publicly disclosed after filing the provisional,
then it is possible to file a PCT application within one year after filing
the non-provisional application. However, If you publicly disclosed
the invention after filing the provisional, then a PCT application would
have to be filed before the provisional application expires.
A public disclosure of the invention prior to the priority date of an
international patent application will prevent issuance of a foreign patent
or will invalidate the patent if it is issued. The filing date of
the PCT application must be within a year of the earliest application to
which priority is claimed. So, if the PCT application claims the
filing date of the non-provisional application, any disclosure prior to
that filing date would invalidate the PCT application. If the invention is
not publicly disclosed during the pendency of the provisional application
and the provisional filing date is not claimed as a priority date in the
non-provisional, then waiting until a year after filing the
non-provisional application defers the high cost of a PCT application to
about 2 years from the filing date of the provisional application.
How Can a Provisional Lead to a Loss of Patent
Rights?" Some care and preparation is required for a
provisional application because its value may be otherwise lost and the
inventor's right to a patent may be lost. Significantly, this loss of
rights may not become evident until litigation seeking to enforce the
patent or in licensing negotiations.
- Example 1: Suppose the provisional patent does not meet the
requirement of the law regarding an enabling description. Also, assume
that there is a public disclosure or a public use of the invention
within a year prior to filing the provisional. Finally, assume that
the non-provisional application is filed within the year of filing the
provisional, but more than a year after that public disclosure or use.
In that situation, the right to a patent on the invention would be
lost by operation of law. The non-provisional patent would not benefit
from the provisional filing date because the provisional did not have
an enabling description. The law precludes a patent from issuing if
there has been a public disclosure or public use of the invention more
than one year prior to the filing date. So, the benefit of the
provisional filing date is lost and also lost is the ability of the
inventor to obtain a patent on the invention.
- Example 2: If an inventor is interested in patent rights outside the
United States, the right to a patent in nearly all other countries is
immediately lost unless a fully compliant provisional application or
non-provisional utility patent application is filed before public
disclosure of the invention or sale of a product incorporating the
invention. If the provisional is not enabling, any public disclosure
or public use prior to the filing of a non-provisional application
will probably foreclose the ability to obtain foreign patent
protection.
If Done Right, Is a Provisional Patent Useful?"
A provisional application is useful to immediately give the prospect of
future patent protection to an invention. It has the benefit of providing
an extra year of patent protection for a subsequently issued patent. By
filing a fully compliant provisional application first, and then filing a
corresponding non-provisional application that references the provisional
application within the 12-month provisional application pendency period, a
patent term endpoint may be extended by as much as 12 months. This is
obtained for a cost, which adds about $1,025 to the $3,500 small entity
base cost of a non-provisional application using Attorney Louis Ventre,
Jr.'s services. One down side is that it also postpones the opportunity
for early publication of the patent application (publication starts the
clock on when royalties can be sought from future infringers). See the
answer to Frequently Asked Question: "Are patent
applications published by the Patent Office?"
What a Provisional Application Should Have. The
written description and any drawing(s) of the provisional application must
adequately support the subject matter. Therefore, care should be taken to
ensure that the disclosure filed as the provisional application adequately
provides a written description of the full scope of the subject matter
regarded as the invention and desired to be claimed in the later filed
non-provisional application. Care must be taken to include the full scope
of the invention, including possible design-arounds. Additionally, the
specification must disclose the manner and process of making and using the
invention so as to enable any person skilled in the art to which the
invention pertains to make and use the invention and set forth the best
mode contemplated for carrying out the invention.
Provisional Application Fees. The Patent Office
filing fee for a provisional application is $125 for
a small entity or $250 for a large entity and Attorney Louis
Ventre, Jr.'s charges $900 to prepare the submittal package. For a small
entity, that is the $1,125 fee referenced above. This fee assumes that you
have a complete write-up of your invention, subject to Attorney Louis
Ventre, Jr.'s minor editing. The stated fee covers Attorney Louis Ventre,
Jr.'s review of the write-up, minor editing to help ensure completeness,
preparation of the electronic filing documents, and electronic submittal
to the Patent Office. The government filing fees may be more than the
stated $125 (or $250 for a large entity) if a provisional
application is in excess of 100 pages.
What Is Recommended for a Provisional Application.
Attorney Louis Ventre, Jr. recommends that an applicant desiring to submit
a provisional application not do so with the lower fee option because the
applicant runs a substantial risk that the submitted papers will not
adequately describe the invention or likely design-around variations. If a
provisional application is sought first, it is highly recommended that an
applicant engage the services of Attorney Louis Ventre, Jr. to prepare a
provisional application that has the same attention to detail of the
invention as would be given a non-provisional application.
This approach substantially improves the likelihood that the application
will have value in a later filed non-provisional application. In this
case, the total charges for the preparation and filing of the two
applications $3,870 plus filing fees of about $655 for most small entities.
This approach adds $1,125 to the cost of a non-provisional application for
a small entity; it adds up to one year of patent protection for the
invention, it defers official patent office action on the patent
application by up to one year, and it defers
early publication potential by up to one year.
How Long is A Provisional Kept by the Patent Office?
A provisional application is retained by the U.S. Patent and Trademark
Office (USPTO) for at least 21 years.
Additional Information. Additional information
is also available on non-provisional
utility patents, design patents,
and plant patents.
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This file last modified 09/17/11.
This page is http://www.lventre.com/provisional.html.
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