Provisional Patent Applications -
Frequently Asked Questions
While the Provisional Application for Patent (PAP) offers a number of advantages in certain circumstances, it is not for everyone or every situation. It is important that an inventor understand exactly what a Provisional Application will, and will not, do.
How do I get a Provisional Patent?
You can't. There's no such thing as a Provisional Patent, only a Provisional Application.
What is a Provisional Application?
A Provisional Application for Patent (sometimes, incorrectly, called a "Provisional Patent Application" or PPA) is a patent application, filed in the US Patent and Trademark Office (USPTO), like any other US patent application. The provisional application will be granted a filing date just like a regular utility patent application. However, unlike conventional utility patent applications:
- it will not be searched or examined
- it will never become a patent
- it is automatically abandoned in one year
- it cannot claim priority or benefit from any other application and
- it does not start a 20 year patent term running.
What do I need to include in my Provisional Application?
There are no formal requirements for a Provisional Application. You need only a specification and drawings, in no particular format. No claims are required, although some recent information from other countries would indicate that it's a good idea to include one general claim to avoid a later problem if another country decides that an application with no claims is not "complete".
With that said, you should not assume that because there are no formal requirements that you can file just anything and get the benefit of an early filing date when you later file your conventional application. Your Provisional Application must be "enabling" - that is, you will need to describe your invention in complete enough detail that a "person having ordinary skill in the art" could build (practice) the invention (as defined by the claims in the utility patent which you will file later based on the provisional) from your application. Since you don't know what those claims will be, you should include everything you know about the invention in the Provisional Application. Include clear drawings showing every feature of the invention. Describe the best way of building or practicing the invention, and as many alternatives as you can think of.
That is why we recommend that you have a patent attorney prepare and file the provisional application from the most complete disclosure you can provide. However, you may wish to write your own disclosure to be used as a provisional application. If you do, we recommend that you still have a professional patent attorney or agent review and file the provisional application to ensure that you have not said anything which might limit your later utility patent, and see that the application is properly filed. The professional should put the provisional filing date in a tickler file, and remind you as the deadline for formal filing approaches.
Where can I get a "Provisional Application Form"?
You can't. There's no such thing. Your provisional application needs to be written up just like any other patent application. You might want to use our Microsoft Word Patent Template as a guide for what information needs to be included - see our "How do I..." page for the form.
What forms do I need to file with my Provisional Application?
The only forms you'll need if you're filing on paper are a Provisional Cover Sheet and a Fee Transmittal form. You can download these forms in PDF format from the USPTO web site. You should include a self-addressed return postcard listing the items you're filing (which the PTO will stamp and return to you), and you should file by USPS Express Mail, return receipt requested.
Your provisional application can also be filed electronically using the USPTO's EFS-Web system. You will need to file the application in PDF format, along with an EFS version of the Application Data Sheet (use the ADS form instead of the Provisional Cover Sheet). No Fee Transmittal form is required, as it will be automatically generated.
The electronic filing system has certain very specific requirements as to how the files need to be created and what files you need to upload (and how they are uploaded). Also, there are differences as to what you can do on with the EFS-Web system, depending on whether or not you are registered with the USPTO. So, although it is possible to file your provisional application yourself as an unregistered filer, we strongly recommend that you have a professional do the actual filing as a registered filer.
How do I turn my Provisional Application into a patent?
You can't - a Provisional Application will never become a patent. It's necessary to have a utility patent application on file, which will be examined and (hopefully) eventually issue as a patent. There are two ways to do this without losing the benefit of your Provisional Application filing date:
- File a regular US utility patent application or PCT International application within a year of the Provisional filing date, claiming benefit of the Provisional. The filing date of the provisional application will be transferred to the new application, giving an earlier filing date for priority purposes but not reducing the 20 year term of the utility patent.
- Convert the Provisional Application to a regular utility application. The American Inventor's Protection Act of 1999 (AIPA) changed the law to permit the conversion of a Provisional Application into a Utility Application, even if the Provisional did not have claims, which are required in Utility applications. It appears that the PTO never expected this route to be used, but added the provision to address concerns in other countries that the Provisional might not count as a "real" patent application for priority purposes. The USPTO fees for doing this are the regular utility patent application filing fee, plus a surcharge if the nonprovisional fee or oath/declaration were not filed with the provisional application (which, of course, they would not have been). If the provisional did not have claims when it was filed, a preliminary amendment would be required to add the claims.
In the end, it shouldn't matter which path you took - filing a new application or converting the Provisional - but procedurally there could be big differences.
The normal path is to file a new application (claiming benefit of the Provisional) which is much more formal and, in most cases, more detailed than the Provisional. Most Provisional Applications will take significant work to turn them into a useful utility application, and it's easier to do that by filing a new application than by trying to amend the existing one. The term of the patent which will issue on the utility application will be twenty years from its actual filing date, not the provisional filing date.
If you convert the provisional to a non-provisional, it would appear that the usual rules against adding "new matter" to an existing application would apply, which would preclude adding anything which wasn't in the provisional. The "new matter" rules don't apply if the provisional is simply followed by a utility application, although of course the priority date of the provisional application doesn't apply to anything which wasn't in the provisional. There is also additional paperwork to be filed - a petition to convert (with the surcharge for not paying the nonprovisional fee in the first place), a preliminary amendment to add claims, and all the additional transmittal forms, etc. - which are not needed when a new application claiming priority is filed. Finally, your patent term will be counted from the filing date of the provisional (now converted to non-provisional) application, rather than from the date of the later-filed utility application - in other words, you lose up to a year of patent term.
In short, there doesn't seem to be any advantage to conversion, and significant disadvantages in doing so. The regulations permitting the conversion specifically point this out and state that you probably should file a new application claiming benefit of the provisional instead. While the conversion path is open, theoretically, it does not seem that it is likely to be used as a practical matter.
What's the difference between a Provisional Application
and a Disclosure Document?
A Disclosure Document was a paper filed under a former program of the USPTO which allowed an inventor to file a description of his invention with a small fee ($10). A Provisional Application is a "real" patent application, which gets you a filing date and allows you to claim "patent pending" status. And, the most important difference: as of November 2006, the Disclosure Document program no longer exists, while Provisional Applications still do.
As a matter of history, the Disclosure Document program was started in 1969. It was a way for the Patent Office to take the disclosures people were sending them anyway, and charge for filing them. They were kept on file for two years, then discarded, unless the inventor filed a utility application within the next two years referring to the Disclosure Document. At most, a Disclosure Document might have served as evidence of a date of conception of the invention. Unlike a patent application (provisional or utility), it did not give you a filing date or set the date of invention. To complete the process of invention for the purpose of proving you were "first to invent", you would still have had to file a patent application or prove that you had actually built the claimed invention.
In the Final Order eliminating the Disclosure Document Program, issued on November 3, 2006, the USPTO noted that only 0.04% of the three million patents issued after the program began in 1969 ever referenced a Disclosure Document. As to the use of a Disclosure Document to help prove date of conception, the PTO noted that Disclosure Documents were used only about once a decade in interference proceedings, of which 90-300 were declared each year, and such proceedings still required other evidence to prove date of invention.
Under the "first inventor to file" system which came into effect in March 2013, the date of conception is no longer relevant, so there is even less reason to want to file a "disclosure document", even if it were still possible.
Should I file a Provisional Application or a "regular" application?
That's a decision you'll have to make based on your own particular circumstances. Provisional Applications are not, as they have been billed in some quarters, a cheap alternative to a conventional patent application. They do have their advantages, if used properly.
Note that you cannot file a design patent claiming the benefit of a Provisional Application, so if a design patent is the appropriate form of protection for your invention, you must file a design patent application instead of a provisional. If you are in any doubt about whether a design or utility patent is appropriate, consult a professional before filing (preferably Brown & Michaels).
Reasons why you might want to file a provisional application:
- Set your filing date in the Patent Office: With the change to "First Inventor to File" on March 16, 2013, it will become much more important to have the earliest possible filing date than it was under the historical "First to Invent" system. Once you have enough detail on your invention to be able to explain it in fairly complete terms, it is a good idea to file a written disclosure as a provisional application. That will, of course, start a one-year clock running within which you need to file a utility application. If you develop the invention over the year, you can file one or more additional provisional applications if it appears that the developments are going to be significant enough to be patentable, then roll up all of the provisional applications into your final utility application.
- Lack of Time: If there is going to be a publication or sale on such a short deadline that there is no time to prepare a formal application, the entire publication should then be filed as a provisional application, so that even if additional material is later added, at least the matter in the publication will be predated by the provisional filing date. (BUT - it should be noted that in some highly technical areas, particularly genetic engineering and other biotech fields, the PTO examiners hold the position that a disclosure which is non-enabling as a patent application is nevertheless enabling as a publication. In these cases, filing the publication as a provisional application might not provide the benefit one would desire - if at all possible, file the formal application before publication!)
- Time to study the market: The Provisional Application gets you a filing date on which you can later rely, at relatively low cost, while you and your attorney evaluate your invention and/or try to find out if there is a market for the product or the application. You can then proceed with a search which will lead to a more refined formal application. However, you should bear in mind that any material which is not in the provisional application will not be entitled to the earlier filing date. Your provisional should be as complete as you can make it, even if it is not formally acceptable as a conventional patent application.
- Time to raise money: You can file a Provisional Application now and delay the cost of filing a formal application while you arrange for financing. However, you must be sure to file an "enabling" disclosure, and not omit any information which will later be key to the formal application. Filing a Provisional Application to get time to raise money for a conventional application may not be as good an idea as it seems at first glance, though. The total cost will be higher than if you went ahead with a conventional application, and at the end of your year period you'll need to come up with not only the cost of the conventional US application, but also the cost of any foreign applications you might decide to file (see below).
Reasons why you might not want to file a provisional application:
- Added cost. If you're ready to proceed with the formal application, why bother with a provisional? The cost of having the provisional application and the conventional application prepared will, at best, cost the same as just having the conventional application - most likely more - and the filing fees will be the total of the provisional fee and the conventional fee.
- Added delay. The Provisional Application will never be examined, and even though the later conventional application will (if you do the paperwork right) get the effective filing date of the Provisional, for the purposes of delay in the USPTO its actual filing date is when the paper starts flowing. If your aim is to get patent protection as soon as possible, filing a Provisional Application will only add delay.
- If you're not yet sure what you will need to include in the application, or what it will take to make the invention work. Since an incomplete provisional application cannot be relied on to provide an earlier filing date, it might be better to wait and then file a formal application which covers everything relevant.
- You'll want time between filing your utility patent and having to file foreign patents - see "What about Foreign Patents?", below. Normally, if you started with a utility patent application, you'd have a year within which you could decide if you wanted to file for foreign patent protection, and in which countries. If you start with a provisional application, you're going to have to file US and foreign (or PCT) applications at the same time.
- You need a design patent - Provisional Applications cannot be the basis for design applications. If the novelty in your invention is the appearance (as opposed to the function), you will need to file the application as a design application in the first place. If there is any question as to the kind of patent which is appropriate for your invention, consult with a professional before filing.
What About Foreign patents?
You need to file for patents in foreign countries within a year of filing a US Patent Application, if you want to use the filing date of the US application as the effective ("priority") filing date in the foreign countries. This can be very important, since most foreign countries do not permit any sale or publication before filing for a patent. In the past, many applicants used this year to test the waters and see how the USPTO was going to respond before committing to the enormous cost of filing in other countries.
The Provisional Application starts the 1-year period for foreign filing, if you are going to use the earlier Provisional filing date as your "Priority Date" for the foreign application(s).
Thus, if you are planning to file in foreign countries, you'll need to file both the US and foreign (or PCT) applications before the end of the year from your Provisional Application filing date. As a practical matter, this usually means filing them at the same time, which could be a very large expense which would otherwise be spread over a year.
This could mean that most of the one year grace period most applicants rely on before deciding where to file could be used up before the formal application is prepared and filed. Of course, you could always use the later filing date of the formal application as your priority date, unless there's a publication or the like which will make this impossible.
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