United States Provisional Application – A Brief Introduction

1.Features:

1. Does not undergo substantive examination on the merits.

2. No submission of IDS required.

3. Claims not required, but can be included to prevent the application from being regarded as a non-patent publication during potential European patent prosecution.

4. Drawings typically required. (In accordance with the provisions in 35 USC 113 and 37 CFR 1.81 (a), drawings, if present, need to be submitted.)

5. Applicant(s) need not file an affidavit in the form of an oath or declaration (under 37 CFR 1.63).

6. A Cover Sheet (or an Application Data Sheet) must be included.

7. Cannot claim priority to any previous U.S. or foreign applications.

2.Advantages:

1. Lower Costs - The provisional application is a relatively simple application, requiring a less cumbersome drafting effort.

2. Non-English Language Filing - The provisional application can be first filed in a non-English language and an English translation later provided (within an Office-specified time limit) when a non-provisional application claiming its benefit is filed.

3. An Earlier Effective Filing Date - Obtain an earlier priority claim date for major or essential portions of an invention in a later non-provisional application by first disclosing those major or essential portions in a provisional application, as in accordance to U.S.C § 112, 1st paragraph.

4. Reduced Chances of Rejection - With an earlier obtained effective filing date, examiners need to search for prior arts which predate at least the effective filing date of the provisional application.

5. Priority for Foreign Applications - Within 12 months from the filing date for the provisional application, one can apply for a patent application in other Paris Convention contracting states on the same invention, claiming priority from the U.S. provisional application (Refer to Paris Convention Article 4A and MPEP 201.04 (b)).

6. Allows “Patent Pending” Status Mark on Products – Discourage competitors by showing them that an application for a patent for a product has been filed at the USPTO.

7. Postpone Utility Patent Filing Costs – First filing a provisional application allows you to delay the decision to file a more costly utility patent for one full year.

8. Earlier Effective Filing Date - Due to the earlier filing date of the application for patent in the United States by filing a provisional application, one may be able to use the benefit claim under 35 U.S.C. 119(e) of the provisional application to overcome rejections based on 35 U.S.C. 102(b). In other words, once the benefit claim under 35 U.S.C. 119(e) for the provisional application is perfected, the rejection must be reconsidered to determine whether the prior art still qualifies as prior art under 35 U.S.C. 102(b) or whether the prior art instead qualifies as prior art under 35 U.S.C. 102(a).

9. Longer Patent Term - The calculation of the 20-year patent term of the United States utility patent is measured from the filing date of the later nonprovisional application, not the filing date of the earlier provisional application from which 35 U.S.C. 119(e) priority is claimed.

10. Proof of Concept – A provisional application is a more substantial and concrete technical “demonstration” for entrepreneurs to raise capital from prospective investors.

11. Permits Earlier Public Disclosure - A provisional application can reserve the chance of being granted a patent and allow the applicant to publicly disclose his or her invention as early as possible.

3.Important Rules & Requirements:

1. Within one year from the filing date of a provisional application, if no subsequent nonprovisional application claiming its priority is filed, or if the provisional application is not converted to a nonprovisional application, the provisional application shall automatically be regarded as abandoned and not be subject to revival.

2. The provisional application and a subsequent nonprovisional application shall have at least one inventor in common.

3. Support for the disclosure of the nonprovisional application has to be found within the provisional application, in order to claim priority under the provisional application as a priority document.

4. The provisional application cannot claim any other prior applications as a priority document. However, the provisional application itself can be used as a priority application.

5. The United States patent system does not permit provisional applications for design patents.

6. The disclosure inside a provisional application must provide a written description of the full scope of the subject matter regarded as the invention at the time of filing. No new matter can be later added.

7. It is important that the specification of the provisional application shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. See 35 U.S.C. § 112, 1st paragraph. Otherwise, such provisional application cannot be accorded with a proper filing date.

8. It is important to remember that the provisional application is not a formal utility patent application. Therefore, it is not examined and cannot become a patent (without being converted to a non-provisional application first).

II. Implementation Strategy & Timing

For filing a provisional application, the required documentation and patent drafting effort is less cumbersome and the official filing fees are much cheaper. Thus, when facing uncertainty in funding or in whether the invention holds sufficient monetary return, filing a provisional application may be a viable option. The applicant may use the the 12-month period after the filing of the provisional application to seek out possible sources of funding or evaluate the possibility of assigning the application rights to others in return for money.

Another type of situation is where the applicant would like to obtain the earliest possible filing date to defeat competitors—for example, when an applicant suspects a competitor is also very close in filing its own patent application for a “similar” version of the invention.

Another type of situation is where an invention is relatively complex, and can be organized in several sequential development stages until final completion. Therefore, it is advantageous for the applicant to file a provisional application upon completion of intermediate stages to obtain the earliest possible filing date.

III. Preparation of Corresponding Documentation

Although the drafting effort for a provisional application is less cumbersome, there are some important items to remember regarding the description and drawings. For example, drawings and the description need to be on separate pages, an invention title is required, and invention elements need to be designated using reference characters, typically numerals. Furthermore, a filing date for the provisional application is only granted upon the specification fulfilling the requirements under 35 USC 112, first paragraph, and when any drawings required by 37 CFR 1.81(a) are filed.

Therefore, take special care with following additional items when filing a provisional application to protect your firm’s interests:

1. File Format:
   It is preferred to send us the description and drawings for the provisional application in Microsoft Word file format. However, the above files may also be sent in PDF document format (in USPTO approved version) if no file conversion is needed. When sending a Word document file, please ensure that the “Revision Tracking” feature is deselected and that all text is in black to avoid potential text visibility issues after final file conversion.

2. Items relating to Drawings:
   
1. Do not combine portions of the description and the drawings together on any given page to form a "mixture". Drawings should be inserted into a new page, rather than inserted into an existing page.
2. Please provide image files in black-and-white (without colored text or color drawings). Avoid placing too many drawings on the same page to prevent issues due to lack of visibility or clarity of the drawing features.
3. Use A4 page size. All page margins should be properly set (recommended top/left side margin is 25mm, bottom/right side margin is 15mm). Furthermore, all drawing sizes should be consistent.
4. The drawing section needs to have a TITLE, and the text in the description should not be less than 3.2mm in size as required by USPTO; avoid non-related textual content inside the drawings.

3. An Application data sheet is not required. NAIP shall complete it for you.

4. When detailing the background and history of the invention, if references to prior cases or other background references are made, the applicatnt must provide NAIP with the citations made in those references.

IV. Conclusion

The provisional application of the United States has many advantages, such as being simpler to prepare, allowing for faster filing, lower costs, options to secure earlier effective filing dates, allowing for earlier disclosure of the invention products in public, and the ability to be used as a priority application for later filings within the United States and abroad, without taking away from the 20-year patent term. In recent years, statistics show that the provisional application has steadily risen in popularity. Therefore, for enterprises and businesses today concerned about costs, the provisional application and its various advantages and features makes good sense as part of your overall patent strategy.

(Source: USPTO "Performance and Accountability Report Fiscal Year 2008")

If you feel a United States provisional application option suits your needs, or if you have any questions, please contact NAIP for assistance.