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Provisional Patent Application

Prior to June 1995, inventors did not have the option of filing a provisional patent application to protect an invention before receiving a patent. Instead, prior to showing it to investors or to manufacturers, inventors typically protected an invention by building and testing the invention or by filing a full patent application so that a record of the invention existed. Although these methods did provide some protection, neither method was a practicable solution since it was not always possible to build and test complex new technologies or to take the time and effort to file a non-provisional application.

Benefits of Filing a Provisional Patent Application

Beginning on June 8, 1995, inventors received the benefit of protecting an invention without undergoing the substantial cost of filing a full patent application. A provisional patent application, or PPA, gives an inventor up to one year of protection. Inventors that want to search for a manufacturer or that want to test the commercial market will often use a PPA as inexpensive and easy way to protect an invention from theft. A PPA provides the following additional benefits:

  • Allows the use of a "Patent Pending" notice in connection with the invention
  • Allows an inventor to securely promote a commercial invention
  • Keeps the patent application confidential without publication
  • Allows the applicant to submit additional inventor names when an unintentional omission occurs
  • Allows the inventor to file more than one provisional application and allows consolidation into one non-provisional application

If the inventor files a non-provisional application within one year of the PPA, it must make specific reference to the corresponding PPA. The following advantages apply when the inventor files a corresponding non-provisional application by the 12-month deadline:

  • The USPTO uses the provisional application filing date to evaluate the patentability of the invention. This date can be used to establish that the invention came before other prior art. However, reliance on the date only applies to the subject matter included in the PPA.
  • The applicant receives an additional year of protection. The patent term is based on the filing date of the non-provisional application rather than the provisional application filing date.

If the inventor fails to file a corresponding non-provisional application within 12 months of filing the PPA, the inventor cannot claim these benefits.

Filing a Provisional Patent Application

Filing a PPA is less complex than filing a non-provisional application. An inventor has one year from the time of the first sale, offer for sale, public use, or publication of the invention to file a provisional application. To obtain a valid filing date, the PPA must contain:

  • A filing fee
  • A written description that explains how to make and use the invention (to benefit from the PPA later, the description should support the full scope of the subject matter later claimed in a non-provisional application)
  • Necessary drawings that explain how to make and use the invention

An applicant can use a technical paper written for a journal as the description if it meets the requirements. Unlike a non-provisional application, the PPA does not need to include an abstract or summary, a claim or claims, a Patent Application Declaration, or an Information Disclosure Statement. The PPA, however, should include the names of each inventor that contributed to the invention.

Converting a PPA to a Non-provisional Patent Application

Instead of filing a corresponding non-provisional application, the inventor can convert the PPA into a non-provisional application. The applicant must file a petition for a conversion within 12 months of the filing date of the PPA. This method, though, will decrease the patent term by 12 months. The USPTO will determine the term of the patent by using the filing date of the provisional application instead of the filing date of the non-provisional application.

Next Steps
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how to best protect your business' intellectual property.
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