Provisional application

Not to be confused with Provisional application (treaty).
Patent law
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A provisional application is a legal document filed at the intellectual property offices of some countries that establishes a filing date for a patent application, but does not mature into an issued patent and will be deemed abandoned one year after its filing.[1][2][3][4]

There is no such thing as a "provisional patent".[4]

The same term is used in past and current patent laws of different countries with different meanings.

History

The provisional application was introduced to U.S. patent law with a 1994 amendment of the Patent Act of 1952.[5] A 12-month benefit of priority to foreign-filed applications had been a part of U.S. patent law since the 1901 U.S. ratification of the Brussels revision of the Paris Convention for the Protection of Industrial Property.[6]

Characteristics

A provisional application, as such, is never examined by the USPTO, and therefore will never become a patent on its own (unless the provisional patent application is later converted into a non-provisional patent application by the applicant, and then the application is examined as a non-provisional application). The provisional application is also not "published", but becomes a part of any later non-provisional application file that references it, and thus becomes "public" upon issuance of a patent claiming its priority benefit.[7]

A "provisional" is automatically abandoned (expires) one year after it is filed. The provisional filing date is not counted as part of the 20-year life of any patent that may issue with a claim to the provisional filing date.[7]

The United States Patent and Trademark Office (USPTO) announced on December 8, 2010, that it was implementing a Missing Parts Pilot Program. This pilot program would provide applicants with a 12-month extension to the existing 12-month provisional application period. This pilot program would not change the requirement for an applicant to file a non-provisional application within 12 months; though it would allow additional time to reply to a missing parts notice.[8][needs update]

A provisional application includes a specification, i.e. a description, and drawing(s) of an invention (drawings are required where necessary for the understanding of the subject matter sought to be patented[9]), but does not require formal patent claims, inventors' oaths or declarations, or any information disclosure statement (IDS). Furthermore, because no examination of the patentability of the application in view of the prior art is performed, the USPTO fee for filing a provisional patent application is significantly lower ($60 - $240 as of August 2023[10]) than the fee required to file a standard non-provisional patent application.

Procedure and benefits

To obtain the benefit of the "provisional" filing date, a non-provisional patent application must be filed, claiming benefit of the filing date of one or more specific provisional patent applications,[11] prior to their expiration.

The provisional patent application is only pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application claiming the benefit of the provisional application must be done within 12 months. Otherwise, the rights to claim the benefit of provisional application are lost.[12]

If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases).[13]

Information Disclosure Statements (IDSs) are not permitted in provisional applications. Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.[14]

The advantages of a provisional patent application are:

  • ease of preparation,
  • lower cost, and
  • the ability to use the term "patent pending", which can only be legally used when a patent application has been filed, and which may have significant marketing advantages.[15]

See also

References

  1. ^ "Provisional patent applications". IP Australia. Retrieved 2025-01-03.
  2. ^ "Cas particulier : la demande provisoire de brevet". Institut national de la propriété industrielle (in French). 2020-06-30. Retrieved 2025-01-03.
  3. ^ "Provisional Application for Patent". United States Patent and Trademark Office. Retrieved 2025-01-03.
  4. ^ a b David Pressman, Patent It Yourself, Nolo Press, 2006, page 56, ISBN 1-4133-0516-4.
  5. ^ Ladas & Parry LLP (2009-07-17). "A Brief History of the Patent Law of the United States". Archived from the original on 2013-01-15. Retrieved 2010-11-05. The basic structure of the present law was adopted in 1952. ... Since 1952, the law has been amended several times and has continued to develop by way of case law. ... Some of the major changes that have been made since 1952 are as follows: ... 1994 ... Introduced the possibility of filing provisional patent applications. 35 USC 111(b) and 119(e)
  6. ^ Chisum, Donald (2010). "Volume 4A, Chapter 14 Priority by Foreign Filing, § 14.02 Historical Development". Chisum on Patents. Seattle: Matthew Bender/LexisNexis.
  7. ^ a b Provisional Application for Patent published by the United States Patent & Trademark Office.
  8. ^ USPTO Implements Pilot Program
  9. ^ 35 U.S.C. 113 Drawings Archived June 1, 2009, at the Wayback Machine
  10. ^ "Current Fee Schedule" (PDF). Retrieved May 6, 2021.
  11. ^ "37 C.F.R. 1.78(a)(4)". Retrieved 2007-09-01.
  12. ^ "35 U.S.C. 111(b)(5)". Retrieved 2007-09-01.
  13. ^ For the purpose of claiming the priority of a subsequent provisional application (e.g. a second provisional application) in a PCT application or foreign (non-US) application under the Paris Convention, the filing of the subsequent provisional application will only be the starting date of another valid priority year if, at the time of filing the subsequent provisional application, the first provisional application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it (the first provisional application) has not yet served as a basis for claiming a right of priority. The first provisional application may not thereafter serve as a basis for claiming a right of priority. See Article 4 C. (4) of the Paris Convention.
  14. ^ "MPEP".
  15. ^ "Provisional Patent Applications". Archived from the original on 2007-08-16. Retrieved 2007-09-01. "The importance of this is that you can lock in your priority filing date with the provisional application, while at the same time you are permitted to apply the coveted term "Patent Pending" to your invention and/or products. This is important because you cannot use the term "patent pending" or "patent applied" legally in the U.S. unless you do actually have some kind of a patent application on file with the Patent Office."