04/20/2009

Provisional Patent Application

Q. What is a provisional patent? A.  There isn’t a provisional patent.

Rather, one type of application for a patent that may be filed with the USPTO is a provisional patent application.  Generally speaking, a provisional patent application preserves a filing/priority date and stays alive for one year, after which the applicant may elect to convert it to a regular utility patent application, or allow the provisional application to die.  Unlike regular utility patent applications, the USPTO does not examine the provisional application.  It merely sits on the PTO shelf.  If the applicant elects to convert it to a utility case, then regular PTO examination of the case proceeds.  If the applicant elects to discontinue patenting efforts for the subject matter, the provisional application merely expires and the file remains unpublished.

A provisional application is typically less formal than a regular utility patent application in that patent claims are not required.  However, there is a danger that filing a rough application will leave out critical material needed to adequately describe the invention.  Specifically, the provisional application must satisfy 35 U.S.C. § 112’s written description requirements and adequately support any claims subsequently added during conversion to a utility application.  Any new matter excluded and then later added during conversion to a utility case will not be given the benefit of the earlier provisional filing date.  Similarly, the written disclosure must satisfy 35 U.S.C. § 112’s enablement requirement and describe the invention in adequate detail to allow one of ordinary skill in the relevant field to make and use the invention based upon the written disclosure.  As such, cutting corners with a provisional application can be dangerous and it is better practice to file a provisional application that meets the requirements of the regular utility application.

Benefits of filing a provisional application include that they are normally less costly than utility cases.  Some entities needing to file a patent quickly due to an upcoming bar date may elect to file a provisional application because they can generally be completed faster than a full utility application and require preparation of fewer formal papers.  Others electing to go the provisional route do so to use the benefit of the one year grace period for activities such as attempts to commercialize the subject matter.  A provisional gives the owner a one year grace period to decide whether to invest the additional dollars needed to convert the application to a utility case for prosecution.  Some organizations find that one year grace period useful for determining whether attempts to monetize and commercialize the invention will be successful, which in part may determine whether the company wishes to pursue patent protection for the idea.  Filing a provisional application allows the owner to mark commercial embodiments as “patent pending,” which serves to help protect the subject matter during these attempts to commercialize the invention. 

For further information, see http://www.uspto.gov/web/offices/pac/provapp.htm.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

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