Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO) that allows an inventor to establish an early filing date, but which does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a provisional patent.
There are advantages to filing a provisional application. A provisional application is not as costly to prepare and file as a non-provisional application. This is because the formalities involved in preparing a provisional application are less strenuous and the government filing fees and less than a non-provisional application.
A provisional application may also shift the term or life of the patent. A United States Patent term begins when the non-provisional patent issues and expires twenty years after such application’s effective filing date. However, the period in which the provisional application is pending is not counted toward the term of the patent. By initially filing a provisional patent application, an inventor can establish and retain the priority of an early filing date for up to one year before having to file an actual application without affecting the twenty year term. Because of this, an applicant who initially files a patent application can essentially shift the term of any resulting patent into the future by up to one year.
Another advantage is that once a provisional application is filed a product can be marked patent pending. Patent pending marked on a product may ward off competitors from copying or using the idea. Some inventors and businesses also utilize a products patent pending status to raise financing or as a promotional tool to assist marketing of the product.
Inventors and businesses also utilize a provisional application to delay the filing of a non-provisional application so that problems may be resolved. Such problems include ownership issues, inventors unwilling to sign the formal papers required to file a non-provisional application, and issues with determining the actual inventors of the invention.
On the other hand, there are disadvantages to filing a provisional application. First, if the provisional application does not adequately disclose the invention eventually claimed in the related non-provisional application, then such non-provisional application may not be afforded the priority date of the provisional application. A provisional application must enable a person of ordinary skill in the art to make and use the invention for the provisional application to provide a claim of priority to a related non-provisional application. Because the USPTO does not examine a provisional application, inadequate disclosure of the invention may only become an issue many years later in a dispute over the priority date of a patent.
Second, filing a provisional will delay the issuance of a patent. Because a non-provisional will eventually be filed after the provisional, the issuance of any resulting patent will be delayed. Third, the overall total cost of obtaining a patent will be more if a provisional is filed before a non-provisional. This is because the provisional application will eventually be converted into a non-provisional application. Forth, the cost to file for a foreign patent is accelerated. A foreign patent application must be filed within twelve months of filing of a provisional application. This means that an applicant must be prepared to pay the costs of filing for a foreign patent within one year.
Communicating your business goals and strategies to your patent attorney will assist you in determining if filing a provisional application is the correct approach for your business. Depending on your business strategy, filing a provisional application make be best option for your business. For more information, please feel free to contact my office.
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