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An Austin Patent Attorney’s Brief overview of provisional applications

A provisional application allows you to file and hold an inventor’s priority claim for an invention for 12 months. A patent attorney or inventor can file a provisional application without many of the formalities required for a non-provisional application.

A provisional patent application differs from a non-provisional patent application (often referred to as “regular” patent application) in several ways:

  • A provisional application is never examined by the patent office, and therefore does not issue as a patent.
  • A provisional application is not published.
  • The filing of a provisional application does not start the 20 year clock that is used to determine the length of the effective term of a patent.
  • Provisional applications expire irrevocably one year after they are filed.

On the other hand, the following lists many of the differences between a provisional and regular patent application:

  • A provisional application does not have to be in any particular format, unlike a non-provisional application.
  • A provisional application does not have to include claims.
  • A provisional application will not be published.

So, if provisional applications expire one year after filing and can never mature into a patent, what good are they and how are they used?

Once a provisional application is filed, a product may be marked as “patent pending.” While patent pending status does not permit an applicant to enforce any patent rights, it does serve to put potential competitors on notice that a patent application associated with a product has been filed and may issue at some time in the future.

Many small businesses, entrepreneurs, and inventors use the year-long term of a provisional application to try to obtain a licensee, further fund their innovation, determine a market base, and improve their innovations before filing a non-provisional application.

Small business, entrepreneurs, and inventors thereby use the year inform their decision of whether to spend additional funds on obtaining a patent. In many situations, if an inventor is unable to find a licensee or funding source during that year, the inventor may allow their provisional patent application to lapse without a regular application being filed. In this way, the inventors may start the patent process and claim a priority date to their invention with relatively low costs to find out if there is a financial market for their invention.

A provisional application is filed by submitting a disclosure specification of an invention, along with any desired drawings, a cover sheet that names the inventors and identifies the application as a provisional, and the required fees, which are less than the fees for a regular patent application.

Within one year of filing a provisional application, a regular, non-provisional patent application must be filed if the inventor wants the patent to be examined. Provisional applications therefore serve as a relatively inexpensive way to get a file disclosure statement listing the features of your invention.

It is important to carefully draft a provisional application because the regular application is only entitled to the benefit of details described in the provisional application.  Details that are only disclosed in the regular application can still be filed, but will not be entitled to the filing date of the provisional application. For example, if an inventor supplies a scientific article as a provisional application but only describes an invention in very narrow terms, with very specific experimental conditions and results, the provisional application will not be able to support claims that describe the invention in broad generic terms. Thus, only the narrow embodiments described in the article will be able to claim the priority date of the provisional application.

In order to avoid these problems, patent attorneys should write the description of an invention in a provisional patent application just like it would be in a non-provisional patent application. As such, I draft provisional applications in both narrow and broad terms, with alternatives provided for the various elements of the invention, just like a regular application.

In summary, provisional applications are a valuable tool that provide an additional year of patent protection and serve as a relatively inexpensive entry into the patent system.

Posted in Blog, Patent Basics on 10/17/2012 09:02 pm
 

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