It is often the case that a sole inventor or business developing a technology has an idea or innovation that sufficiently developed that it works in principle, but it may not be ready for implementation or may not be ready for the marketplace. For example, an inventor may have developed a new chemical composition for a fertilizer that is effective in laboratory or field test settings, but may not have a final formulation with optimized concentrations of active ingredients. At such a stage it is imperative that the inventor protect the innovation by filing a patent application to prevent a loss of rights that may occur due to, e.g., an inadvertent disclosure of the invention, independent development by a third party, industrial espionage, or other risks to the patent rights in the invention. However, because the invention is still at a developmental stage the inventor may make further discoveries and refinements to the invention. In such situations, a provisional patent application filed with the United States Patent and Trademark Office (USPTO) allows the inventor(s) to secure the patent rights at this early stage and still provide the inventor with the flexibility to update and change the description of the invention prior to filing a non-provisional application that will be examined by the patent office.
A provisional patent application is a form of utility patent application that is filed with the patent office, but is not examined to determine patentability of the invention described in the provisional application. The provisional application is filed in order to establish a priority filing date so that the USPTO has a record that the named inventor(s) invented the technology described in the provisional application as of that filing date. A provisional application will not itself issue as a utility patent. It is a kind of placeholder for a to-be-filed non provisional patent application.
The provisional patent application does not have to include all of the formal requirements of a non provisional patent application, such as a formal patent claim or an abstract. A description of the invention and supporting drawings are passable for a provisional application. However, it is best to prepare a provisional application that is as complete as possible. A complete patent application is preferable because the nonprovisional application that is eventually filed and that will claim priority to the provisional application must be supported by the provisional patent application. More specifically, the patent claims in the non provisional application must be sufficiently described to convince the USPTO that the inventor had fully conceived the claimed invention as of the earliest filing date asserted in the non provisional application (i.e., the filing date of the provisional application).
Once the provisional patent application is filed, the inventor has 12 months to file a non-provisional application claiming the benefit of the provisional filing date (“claiming priority”). The non provisional application must be filed within 12 months of the provisional filing date in order to retain the benefit of original filing date. As the inventor further develops the invention (e.g., adds further embodiments and implementations), additional provisional applications can be filed to protect any additional innovations at the earliest possible time. If multiple provisional applications are filed, they can all be swept into the same non provisional patent application, with the non-provisional application claiming priority to each of the provisional applications.
The provisional patent application is a handy tools for securing utility patent rights early in the development of a technology. US patent law changed in 2013 with the American Invents Act, which established the US is a “first-to-file” jurisdiction, meaning that it does not matter who first invented a technology, the first person to file a patent application with the patent office has the better rights to the invention. Thus, early filing of a provisional patent application is an important step in protecting rights in an invention, and establishes “patent pending” status for the invention. Patent pending can be established with provisional patent filing, or any other patent filing. Patent pending status allows the patent applicant to mark any prototypes, literature relating to the invention, or a product or service featuring the invention as patent pending as a warning to any would-be copiers or infringers. Early filing also protects the inventor in scenarios in which the invention is in a quickly developing field of technology and it is likely that multiple inventors are working on the same problem and may independently develop the same invention.
A provisional patent application also protects the inventor from situations where a public disclosure of the invention is made (e.g., on a website, a research paper, or other media) to promote the invention, the inventor, and/or the company for which they work. Such disclosures can negatively affect the right to pursue a patent in the US and in other countries. There is a 12-month grace period in the US to file a utility patent application after a public disclosure of the invention by the inventor or related party. A patent application must be filed by the expiration of the grace period, or the patent rights may be lost.
Some foreign countries also have a grace period, e.g., Canada, Australia and several other countries have a 12-month grace period, and the Russian Federation and few other countries have a 6-month grace period. However, many foreign countries have no grace period (e.g., Europe and China have no grace period except under special circumstances), and thus a public disclosure immediately forfeits patent rights in such countries, if no patent application has been filed and regardless of where the disclosure was made. Thus, an early filing date can protect against the risk of losing rights in the invention.
A provisional patent application is not published and maintains the secrecy of the disclosed technology. Thus, the inventor can maintain the invention as confidential and as a trade secret during the pendency of the provisional application, thereby preserving the protections of
trade secret law. Additionally, the secrecy of the invention may be maintained after filing the non-provisional patent application by filing a non-publication request. If the non-publication request is filed, the invention will only be made public by the patent office if and when a utility patent is granted. Thus, a provisional application provides an excellent tool for establishing a foothold for establishing patent protection, while maintaining the secrecy of the invention and the available protections of
trade secret law.
Provisional applications also offer the benefit of deferring the higher filing fees of non-provisional patent applications and the costs associated with the examination process. The filing fees for the non-provisional application are at least several hundred dollars more than the filing fees for a provisional application. The costs of examination are highly variable, but are usually significant. The provisional patent application pushes the higher costs of the non-provisional application out by up to twelve months, which makes sense in situations where the invention has not yet been demonstrated to be efficiently produced, industry or consumer interest in the invention has not yet been established, or funding and investment in the development of the invention is still needed.
The 12-month provisional period also has the benefit of not counting against the utility patent term if a patent eventually issues. The term for a utility patent is twenty years from the filing date of the non provisional patent application, and the twelve-month provisional period does not eat into that twenty-year term. Thus, the provisional patent application provides an early effective filing date that can be a full year before the term of the patent begins. Provisional patent applications are quite valuable in many situations, whether the invention is still in development, additional funding is required, or other circumstances. Provisional patent applications should always be considered as an option when one is seeking patent protection.
Our patent attorneys have decades of experience in preparing and filing
utility patent applications in the
United States Patent and Trademark Office. Our professionals understand the complexities and subtleties of US patent law, and have the skill to prepare a provisional patent application that effectively describes your innovation and secures your rights. Contact our office for a free consultation
