A patent is a type of intellectual property. It consists of a set of select rights supported by a independent state to an inventor or their assignee for a limited time period in exchange for the public disclosure of an invention. The word patent typically refers to the right granted to a person who develops any new, useful, and non-obvious method, apparatus, item of manufacture, or composition of matter. Usually a patent must meet the pertinent patentability requirements of novelty and non-obviousness.
A patent proposes the right to prohibit others from creating, using, promoting, offering for sale, or importing the patented invention for the term of the patent. This is usually 20 years from the filing date and is dependent on the payment of maintenance fees. Thus a patent is, a limited property right that the government offers to inventors in exchange for their agreement to share the details of their inventions with the public. Like any other property right, it may be sold, licensed, mortgaged, assigned or reassigned, given away, or even discarded.
There are three types of patents-Utility patents (granted to anyone who invents a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement), Design patents (granted for inventing a novel, creative, and decorative design for an article of manufacture) and Plant patents (granted to one who invents or discovers and asexually reproduces any different and unknown variety of plant).
A patent application is a request awaiting approval at a patent office (patent offices are government bodies that may grant or reject the patent application depending on whether the application fulfils the requirements for patentability)for the grant of a patent for the invention described and claimed by that application. Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office(USPTO), that establishes an early filing date, but which does not mature into an issued patent unless the claimant files a regular (non-provisional) patent application within one year. There is no such thing as a “provisional patent“.
A provisional patent application is a low-cost option or an introductory step before filing for a non-provisional patent that gives, one added year of protection or grace and enough time to experiment with your invention in the market before investing in a standard patent. A provisional application is an excellent means to document your invention and demonstrate to others that you are following patent protection for the invention. A provisional can be priceless when you are still busy with R&D and your technology is still developing. You can have a provisional application filed at present to cover the central idea; and then, create innovative ideas and enhancements over the next year, which can be added into your following non-provisional filing.
In the United States, utility patent applications can be filed as either a “provisional” or a “non-provisional” application. For many businesses, the first patent application they file is a U.S. provisional patent application. Provisional patent applications are dependent on few official requirements, are never analyzed by the USPTO, and hence can on no account become a patent. It is also not “issued”, but will become a part of any future non-provisional application file, and thus becomes “public” upon issuance of a patent claiming its priority advantage. Provisional applications are not examined on their plus points and cannot mature into issued patents – thus, once they serve their purpose, they expire.
A provisional application presents an opportunity to place an application on file to acquire a filing date (thereby securing a priority date), but without the expenses and difficulty of a standard /non provisional application. The filing date is normally the date on which a patent application is first filed at a patent office. i.e. the date on which that application is officially accepted at the patent office.
Thus it is possible to file a provisional patent application quickly and economically compared to a non-provisional patent application. By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.
A provisional application must include a printed portrayal of the invention (the patent specification) clarifying how to make and use the invention, and should contain drawings (figures/ drawings are necessary to understand the subject matter required to be patented) that represent and describe the invention.
The specification should also specify the extent of protection of the patent. A specification generally contains a part detailing the background and overview of the invention, a description of the invention and embodiments of the invention and claims, which set out the scope of the protection. A specification may contain figures to support the description of the invention, (gene sequences and references to biological deposits, or computer code), depending on the area under discussion of the application. The majority of patent offices also call for an abstract to provide a synopsis of the invention to assist searching. A title must also be provided for the application.
The claimed subject matter in the later filed non-provisional application must have support in the provisional application.
A provisional application must also include:
- the name(s) of all inventors;
- inventor residence(s);
- title of the invention;
- name and registration number of attorney or agent and docket number (if applicable);
- any U.S. Government organization that has an interest in the application.
There are advantages and disadvantages to provisional patent application.The advantages of a provisional patent application (over a regular/non provisional application) are:
It facilitates instantaneous marketable backing of the invention with greater protection against having the invention stolen. A provisional can be very precious when you are still engaged in R&D and your technology is still developing.
The paper work involved in filing a provisional application is less than for a regular patent application resulting in simplicity of preparation.
The ability to use the term “patent pending” in connection with the explanation of the invention, can only be legally used when a patent application has been filed, and can have major marketing advantages. Filing a provisional patent application allows you to promote your invention as “patent pending.” This claim can serves as a powerful advertising tool, and seeing “patent pending” on your invention will often stop competitors who may want to steal your idea.
The official filing fees are lower and hence it is comparatively economical to file. It provides easy filing with a lesser initial investment and 12 months to evaluate the invention’s commercial potential before committing to higher cost of filing and prosecuting a non-provisional application for patent. Hence several startup businesses, file provisional patent applications because they are less pricey to prepare and file.
The provisional application does not need to include claims or recognize the prior art. However, it does require a full description of the invention.
Provisional applications cannot assert priority over other applications. But a regular patent application can claim the benefit of several provisional applications or the benefit of a combination of provisional and regular so long as the regular patent application is filed within one year of such applications.
A provisional application can establish an early effective filing date. A provisional application can be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention, whichever occurs first.
The filing date of an application is vital as it sets a cutoff date after which any public disclosures will not form prior art (but the priority date must also be considered- The priority date, also called the “effective filing date“, is the date used to establish the novelty and/or obviousness of a particular invention relative to other art). In most fields, the right to a patent for an invention lies with the first person to file an application for protection of that invention. It is therefore generally beneficial to file an application as soon as feasible.
To obtain a filing date, the documents filed must abide by with the rules of the patent office in which it was filed. A full specification obeying all rules may not be required to obtain a filing date. A filed application usually receives an application number.
Note that a filing date will be settled for a provisional application only when it includes:
a written description of the invention, fulfilling all prerequisites of 35 U.S.C. §112 ; and
any drawings essential to understand the invention, conforming with 35 U.S.C. §113.
If either of these items is absent or partial, no filing date will be settled for the provisional application.
Since you have secured a filing date for your provisional filing, you may also then be able to begin promoting your invention (assuming it is fully described in your provisional filing) with reduced threat of anyone stealing your idea.
Also, if you are looking for financing or investment for your technology, prospective investors will generally be keen to see that you are pursuing patent protection; and often a provisional filing will be sufficient to satisfy them that you have taken adequate preliminary steps to protect your technology.
A “provisional” is automatically abandoned (expires) one year after it is filed. The 12-month pendency period cannot be extended. Independent inventors should appreciate that a provisional application will not mature into a granted /issued patent without further submissions by the inventor. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application during the 12-month pendency period of the provisional application so as to profit from the earlier filing of the provisional application.
The provisional filing date is not counted as part of the 20-year life of any patent that may issue with a claim to the provisional filing date. The ultimately filed non-provisional (regular) application will then have an existence which might be as long as 21 years from the filing date of the provisional application. Thus the period of a patent issuing from a non-provisional application and resulting from the conversion of a provisional application will be calculated from the original filing date of the provisional application.
The corresponding non-provisional application must contain or be modified to contain a precise reference to the provisional application.
1) Provisional applications for patent may not be filed for design inventions.
2) No information disclosure statement may be filed in a provisional application.