A provisional application may be a useful tool to many businesses. 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. The provisional application 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”.
Many individuals and businesses may use the attributes of a provisional application to their advantage. 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 are less than a non-provisional application. Some individuals and businesses use the money initially saved when filing a provisional application to promote and advertise their product, while still being afforded some level of protection.
Another advantage to businesses 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.
Yet another advantage of the provisional application is the patent term shift. In certain circumstances, a provisional application may shift the term or life of the patent. A United States patent term begins when the non-provisional patent application issues and expires twenty years after such applications 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 provisional application can essentially shift the term of any resulting patent into the future by up to one year. This shift may be valuable to businesses who realize the greatest profits towards the end of a patents term.
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.
Although advantages do exist to the provisional application, businesses must be cautious when preparing 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. Businesses should seek the advice of a patent attorney registered to practice by the USPTO when filing preparing a provisional application to ensure that the provisional meets the requirements mentioned above.
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. A company should evaluate if having a patent issued sooner rather than later is a priority when deciding whether to file a provisional application.
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 of filing the provisional application.
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 may be the best option for your business.
For more information, please feel free to contact my office.
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