Provisional Patent Applications

Miami, Florida based patent attorney assisting inventors and/or their assignees throughout the State of Florida in drafting and prosecuting patent applications, including provisional patent applications, before the United States Patent & Trademark Office

Basics of Provisional Patent Applications

This type of application can serve as prelude to a utility patent application (non-provisional utility application). It does not apply to design or plant applications. Provisional Patent Applications (PAs) are typically filed to get the all-important filing date and to give the inventor additional time to fine-tune the invention before filing a “full blown” utility application.

The inventor who files PA will be able to use the PA’s filing date as the filing date of a later-filed non-provisional utility patent application for the same invention, but only if the utility patent application is subsequently filed within 1 year of the PA. Failure to file the non-provisional patent application by the 1 year deadline will result in abandonment of the PA. This means that any future utility patent application will not be able to rely on the filing date of the PA as the priority date.

In addition, the patent term for a utility patent which claims the benefit of a PA filing date will start from the filing date of the utility patent and not the filing date of the PA. That is, the patent’s expiration date, about 20 years from the utility patent application’s filing date, will not be affected by the filing of a PA.

Many inventors file a PA to get the all-important filing date. Also, PAs are assignable, and many inventors hope that a business entity with the resources to develop, manufacture, and/or market invention covered by the patent will acquire the PA and its associated rights. Of course, the assignee will then have to file the utility patent application itself to receive the benefit of the PA’s filing date.

PAs can also buy some time to determine the feasibility of the invention from an investment and commercialization perspective during the PA’s one-year lifetime.

During the PA’s lifetime (as well as the lifetime of a utility application), the inventor and/or assignee can claim that a patent is pending for the invention.

Provisional Application Content – the Red Herring

PAs only consist of a description of the invention and drawings, if drawings are necessary to understand the invention.  Claims are not included in the PA. Nor will a PA even be reviewed by a USPTO patent examiner unless a non-provisional utility patent claiming the benefit of the PA’s filing date is filed within the required one-year period.

At first blush, PAs may seem to be an easy, cost effective way to get one’s foot in the door and gain the benefit of the all-important filing date. Indeed, there are a number of publications around which explain how to file PAs to get the filing date and a patent pending in 24 hours.

PAs, however, can be problematic for the unwary. It is important to understand that failure to adequately disclose the invention in the PA, including describing all subject matter from which the claims will be drawn in the non-provisional utility patent application, may render the PA’s filing date useless as to all of the claims which may be allowed in the utility patent application. That is, the PA, even though less formal than a filed later non-provisional utility application, needs to be well written, thorough, and detailed. Remember that the claims, which will define the invention in a later filed non-provisional utility application, will need to be drawn from the information presented in the PA to gain the benefit of the PA’s filing date.

The PA’s filing date has been used by thousands of inventors for the purpose of establishing the “timing” of conception. For example, if inventor Sam filed a PA or utility application after inventor Sarah had filed her PA for the invention described in Sarah’s PA, Sarah would be deemed the first to invent based on her PA if: 1) the utility non-provisional application was filed within the required one-year time frame; and 2) the utility non-provisional application’s claims found support in her originally filed PA.

New Patent Laws and Potential Impact on PA Filings

US Patent Law has undergone major changes as the result of the America Invents Act of September, 2011, and starting in March 16, 2013, the United States will become a first inventor to file country.  Interestingly, with this new law, the filing of PAs may be deemed strategically important from an IP “money-making” perspective because the procedures for establishing the first-to-invent will be moot. Thus under the Sam-Sarah example given above, the patent would issue to Sarah because she was the first inventor to file. That is, Sam will not be able to rely on “procedures of the past” to establish that he should receive any issued patent on the invention because he was actually the first-to-invent.

Based on the foregoing, a PA may well become an increasingly favored way for an inventor to establish that he/she was the first inventor to file. This also means, however, that the inventor will still have to have sufficient understanding of the nature and scope of the invention so that the PA can be written in as detailed form as possible to help ensure that the PA will sometime result in an issued patent with as many of the desired claims as possible. And this requirement could be particularly challenging under the first inventor to file system, where, in a race to be the first inventor to file, the conception is in its “infant” stages and the full extent of the invention is still not fully understood. We may thus see the filing of multiple PAs after an initial PA, or even multiple utility patent applications, for what in the past under the first-to-invent system would have resulted in one utility application.

We at Troy & Schwartz are here to work with inventors and business entities to assist them in filing both provisional applications and non-provisional applications.  We understand that many inventors and assignees will file PAs to try and save on attorney’s fees and USPTO filing fees. We also understand that a properly prepared PA may well be critical to your financial success. Taking both these facts into account, should we have the privilege of drafting a PA on your behalf, we will apply the attorney’s fees we receive for preparing and submitting your PA to any future utility application prepared on your behalf which stems from the PA. Why? Because a good portion of the time drafting the non-provisional utility application will have been spent on preparing a well-drafted PA.

If you are considering filing a PA, we encourage you to call us at (305) 279-4740 or contact us online for a FREE consultation.