The Law Firm of
Louis Ventre, Jr.
Registered Patent Attorney
PROVISIONAL PATENT APPLICATIONS
(Reflects Government fees effective 19-MAR-2011)
| 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. Thus, a provisional application is a means to get "patent pending" status on an invention up to 1 year prior to filing a regular (non-provisional) patent application. It is only useful to get the protection of its earlier filing date if a non-provisional application is filed within that year.|
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. There are two types of provisional applications: A first type based on submission of the applicant's write-up and a second type, called a "full-scope provisional," that is prepared by the attorney in the same fashion as a non-provisional is prepared.
FIRST TYPE: A provisional application based on filing the applicant's write-up (with no substantive amendment by the attorney) is relatively inexpensive. The overall cost ranges from $965 to $1,460, depending on the inventor's or applicant's filing status. Within these amounts the attorney fee for a micro-entity and a small entity is $900; and the attorney fee for a large entity is $1200. Government filing fees are $65, $130, and $260 for a micro-entity, a small entity, and a large entity, respectively.
SECOND TYPE: A full-scope provisional application is one prepared exactly like a non-provisional application, but the government filing costs are less. For the details on a non-provisional application see http://www.lventre.com/details.html. Likely cost is based on attorney fees of $3,000 for a micro-entity and a small entity and $4,500 for a large entity, plus government filing fees of $65, $130, and $260 for a micro-entity, a small entity, and a large entity, respectively.
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.
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.
What Attorney Fees Cover for a FIRST TYPE provisional application. Attorney Louis Ventre, Jr.'s charges to prepare the submittal package. The fees for a FIRST TYPE provisional application noted above 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 $65, $130 or $260 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 (FIRST TYPE) 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 full-scope provisional (SECOND TYPE) 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.
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.
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© 2004 Louis Ventre, Jr.
This file last modified 03/03/13.