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Provisional and Non-Provisional Patent Applications

Provisional Patent Application:

A provisional patent application is a limited, lower-cost patent application that allows the applicant to retain the benefit of the original filing date of the provisional application in determining priority under the later nonprovisional application.

Nonprovisional Patent Application:

A nonprovisional application is the application that is actually reviewed by an examiner at the Patent and Trademark Office. It begins the formal patent prosecution process. It has the same requirements as the provisional application except that the applicant must identify at least one claim in the written description and the specification must be followed by an oath/declaration that the invention was actually invented by the inventor.

Requirements of a Provisional Patent Application:

A provisional patent application has slightly different requirements than a nonprovisoinal application. The applicant is not required to identify claims, or file an oath or declaration attesting that the applicant actually invented the claimed invention. The provisional application also does not need to disclose any prior art references, whereas the nonprovisional application does. In order for a provisional patent application to receive a filing date, the written description must comply with all the statutory requirements for a written description of a nonprovisional application (with the exception that claims are not required) and all necessary drawings must be included in the application.

Benefits of Provisional Applications:

The provisional patent application bestows three benefits for the patent applicant when he or she seeks to file a nonprovisional patent application. The patentee may use the provisional application’s filing date when determining patentability. Secondly, the provisional application becomes a prior art reference that may be used to prevent others from filing a patent within the term of the provisional patent application. Lastly, though the filing date for the provisional application is used to determine priority, the 20-year term of the patent does not begin to run until the filing date of the nonprovisional application. An additional benefit of the provisional application is that it allows the patent applicant to use the phrase “patent pending” in connection with the invention.

Turning Your Provisional Application for Patent into a Full Patent:

Provisional patent applications may be turned into nonprovisional patent applications.  If an applicant wishes to do so, the conversion must occur prior to the provisional application being abandoned or expiring. The conversion request must contain the required fees and must be accompanied by an amendment to the application which identifies one claim to be included in the written description if the provisional application did not already have such a claim. The Patent and Trademark Office encourages patent applicants not to convert provisional applications into nonprovisional applications because upon conversion, the patent term begins to toll from the filing date of the provisional application, which shortens the total term of patent protection.  Rather, the Patent and Trademark Office encourage applicants to file a separate, nonprovisional application which claims the benefit of the provisional application. Thus, the patent term begins to toll with the later filing date of the nonprovisional application and for priority determinations, the applications receives the benefit of the filing date of the provisional patent application.

How long does a provisional application for patent last?

A provisional patent application lasts for one year and is automatically abandoned at the end of the year without being reviewed by a patent examiner.

When should I file my provisional application for patent?

A provisional patent application must be filed within the first twelve months after the first sale, offer to sell, public use or publication of the invention.

What is the advantage of filing a provisional application for patent over the DocumentDisclosure Program (DDP)?

The former advantage of filing a provisional application over the Disclosure Document Program was that the filing date of a provisional application could be used as the effective filing date of a later nonprovisional application where as the disclosure document could not. The DDP was discontinued in 2007.

Patent Priority and Provisional Applications for Patent:
Provisional applications enhance the priority rights of patent applicants.  A provisional patent application provides an earlier filing date from which prior art disclosures may be evaluated. If a prior art reference is disclosed after a provisional application is filed but before the nonprovisional application is filed, the disclosure does not count as a prior art reference that anticipates the invention. This limitation on the number of prior art references used to evaluate the patent application means that the application has a greater chance of success. Additionally, the provisional application itself, may serve as a prior art reference to applications filed subsequent to the provisional application. This serves to block potential invention-theives from filing nonprovisional applications based off of the provisional applications of others.

What are the guidelines for a drawing to be included with a provisional application for patent?

The drawing requirements of a provisional application are the same as those of a nonprovisional application.  The drawings must full comply with 35 U.S.C. 113.


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