PROVISIONALS

What is a Provisional Application?

A provisional application is an informal way of fixing a date for filing of a subsequent non-provisional application.  The non-provisional application must be filed within one year of filing of the provisional.  In some cases, the provisional patent application may consist of a technical paper with a full description of the invention.  The date of filing of the provisional application becomes the “priority date” (effective filing date) of the non-provisional, but only if the provisional application is drafted correctly.

How Should the Provisional Application be Drafted?

The description of the provisional application must disclose the invention completely, as to enable a person reasonably skilled in the field of the invention to practice it without undue experimentation.  The description must disclose all elements of the invention, which will be subsequently included in the claims of the non-provisional application.  Otherwise, the provisional application will turn into a trap and could lead to a complete loss of patent rights.

Informality of the Provisional Application

The requirements for filing of a provisional application are informal when compared to the “non-provisional” patent application.  For example, a provisional application does not require a claim and can be filed with drawings that were completed by hand.

A provisional application is relatively inexpensive.  The costs include $130 charged by the USPTO for filing and a fixed fee for preparation.  A provisional application permits to write “patent pending” on the products embodying the invention even before filing of the non-provisional patent application.  A non-provisional application must be filed within a year in order to take advantage of the priority date of the provisional.

Nondisclosure Agreements

A Nondisclosure agreement (NDA) may be used to preserve the secrecy of your invention disclosed to third parties after submitting a provisional application.  Existence of the NDA will leave the possibility of postponing the filing of a PCT application for another year by submitting a non-provisional application based on the provisional first.  Otherwise, a PCT application must be filed before expiration of the provisional application.  Public disclosure of the invention before the priority date of filing a PCT application would deprive the applicant of the right to obtain a patent or make the issued patent invalid.  A PCT application must be filed within one year of the date of the previously filed priority application.  For example, if the PCT application uses the priority date of the previously filed non-provisional application, any disclosure before the date of filing the non-provisional application will make the PCT application invalid.  If the invention was not publicly disclosed at the time when the provisional application was filed then the applicant may wait a year after filing of the non-provisional application, thereby delaying the filing of the PCT application up to two years from the filing date of the provisional application.

Can a Provisional Application Result in the Loss of Patent Rights?

Caution is required in preparation of a provisional application because the inventor may lose his rights to the patent.  The loss of rights may not be apparent until the trial, in which the patent owner seeks to use his rights against an infringer or during license negotiations.

Example 1

Suppose a provisional application for a patent does not meet the requirement of complete disclosure of the invention.  Moreover, suppose that a public disclosure or public use of the invention occurred during the year prior to filing of the provisional application.  Finally, suppose that a non-provisional application is filed within one year of filing of the provisional application, but more than a year after the public disclosure or use.  In this situation, patent rights to the invention will be lost.  The non-provisional application will not be able to use the filing date of the provisional application because the invention was not fully disclosed.  And because the public disclosure of the invention occurred more than one year prior to the filing date of the non-provisional application, the applicant has lost his right to the invention.

Example 2

The United States of America is one of very few countries that have a grace period permitting the inventor to file an application after a public disclosure occurs.  The grace period is one year.  The rights to the patent in almost all other countries around the world will be lost if, prior to filing of the application, a public disclosure or a sale of a product incorporating the invention occurs.  Thus, if the provisional application does not fully disclose the invention, any public disclosure or use will deny the patent owner the right to obtain protection in other countries.

What Are the Benefits of a Properly Drafted Provisional Application?

The advantage of the provisional application is that it provides instant protection for the invention.  Additionally, a provisional patent application provides an additional year of protection for the invention.  By filing a provisional application in accordance with the law and following it with filing of non-provisional application within the 12-month period, the patent term may be extended by as much as 12 months.  The downside of this process is postponing of the publication of the patent application (a publication begins countdown from which the royalties owed by the future infringers are counted) and issuance of the eventual patent.

What Should be Included in a Provisional Application?

A written description and drawings of the provisional application must provide adequate support for the invention.  Thus, care should be taken to ensure that the description filed with the provisional application fully describes what the inventor believes his invention is and later included in the claims for the non-provisional application.  It is also desirable to include alternative designs of the invention.  In addition, the specification should describe the process of making and using an invention to enable a person reasonably skilled in the art to create and use the invention without undue experimentation.  Additionally, the method of making and using of the invention, which the inventor believes to be the preferred method should be described.

Cost of a Provisional Application

The Patent Office charges $130 for filing of a provisional application.  In addition, I charge a fixed fee ranging from $600 to $2,000 (depending on the complexity and quality of the disclosure) for the preparation of an application with all accompanying documents.  For example, the $600 fee assumes that you already have a full description of the invention and I will make only minor corrections.  I will check your description, make minor amendments to the invention description, prepare all the documents for the application, and apply electronically.  The Patent Office may charge more than $130 if the provisional application exceeds 100 pages.