Demystifying U.S. Provisional Patent Applications*

Provisional Patent in the making

U.S. provisional patent applications have been identified as a good way for inventors to protect their ideas.  While provisional patent applications are a good way to protect a new idea, it is important to keep a few simple thoughts in mind in this respect.  This article will briefly outline some of the advantages and pitfalls of a provisional patent application.

A provisional patent application is a patent application which can be filed in the U.S. Patent and Trademark Office (“USPTO”) with relatively low fees (a few hundred dollars at most) and with few substantive requirements for what is submitted to the USPTO.  Additionally, the term for a patent is 20 years from filing and such term begins with the filing of a non-provisional patent application (or a PCT Application which is sometimes referred to as an International Patent Application).  Thus, a provisional patent application does not start the twenty year clock for patent protection and can therefore result in 21 years of protection, rather than 20 years.  Additionally, a provisional patent application allows an applicant to say that their invention has the status of “patent pending.”

Does this mean that once someone files a provisional patent application they have nothing to worry about?  If only life were so easy.  A provisional patent application is only “provisional”.  What this means is that it will expire after one year from filing.  Accordingly, within one year of filing a provisional patent application, in order to avoid loss of rights, an applicant should 1) convert it to a non-provisional patent application; 2) file a nonprovisional patent application which claims a benefit to the provisional patent application; or 3) file a PCT Application which claims a benefit to the provisional patent application.

If the appropriate filing is completed within one year, does this mean that there is nothing to worry about?  Again, if life were only so easy.  When someone files a provisional patent application and they want their protection to begin on the filing date, all of the relevant information must be submitted as part of the provisional patent application.   If an applicant files a provisional patent application with very little information on an invention and within a year they file a non-provisional patent application with much information, the “reaching back” to the filing date of the provisional patent application will only be applicable for subject matter which was described in the provisional patent application.  Aspects of an invention which are described after the filing of the provisional patent application, such as being included as part of the non-provisional patent application, will “reach back” to the filing date of the non-provisional patent application rather than the filing date of the provisional patent application.  In other words, you can’t have your cake and eat it too.  If you file a substandard provisional patent application, that is the protection that you will receive as of the filing date of the provisional patent application.

This article was written by Ricardo Unikel, an intellectual property attorney at Company Counsel LLC.  Mr. Unikel can be reached at [email protected] and at 484-325-5659.

* This article is providing general information and is not providing legal advice nor establishing any kind of attorney-client relationship.

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