Provisional Patent Application

 What is a provisional patent application?

Once the search has been completed, if the inventor decided to conduct a patentability search, he or she may choose to draft and file a provisional patent application. This form of patent application will not be examined by the U.S. Patent and Trademark Office (USPTO), but may be filed to include important disclosure information that may later be used to claim priority in a subsequently filed nonprovisional patent application. By filing a provisional patent application, an applicant may break up the patent application process and stretch out the associated fees and costs. Also, an inventor may use the time between filing a provisional patent application and a nonprovisional patent application to determine whether his or her invention is marketable, and whether it would be a good business decision to proceed.

A provisional application is filed in the USPTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a). The filing of a provisional patent application also allows the term “Patent Pending” to be applied in connection with the description of the invention.

How long does a provisional patent application last?

A provisional application for patent (provisional application) has a pendency lasting twelve months from the date the provisional application is filed. The twelve-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the twelve-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. §119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.

Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition under 37 C.F.R. §1.53(c)(3) requesting such a conversion within twelve months of the provisional application filing date. However, converting a provisional application into a non-provisional application (versus filing a nonprovisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a nonprovisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the twelve-month provisional application pendency period, a patent term endpoint may be extended by as much as twelve months.

What are the filing requirements for a provisional patent application?

Certain filing requirements exist to properly file a provisional patent application with the USPTO. The provisional application must be made in the name(s) of all of the inventor(s). It 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. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)

A filing date will be accorded to a provisional application only when it contains:

  • a written description of the invention, complying with all requirements of
    35 U.S.C. §112 ¶ 1; and
  • any drawings necessary to understand the invention, complying with
    35 U.S.C. §113.

If either of these items are missing or incomplete, no filing date will be accorded to the provisional application. To be complete, a provisional application must also include the filing fee as set forth in 37 CFR 1.16(d) and a cover sheet identifying:

  • the application as a provisional application for patent;
  • 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);
  • correspondence address; and
  • any U.S. Government agency that has a property interest in the application.

What cautions should I be aware of relating to provisional patent applications?

The USPTO provides a number of cautions that a provisional patent applicant should note:

  • The benefits of the provisional application cannot be claimed if the 12-month deadline for filing a non-provisional application has expired.
  • A provisional application cannot result in a U.S. patent unless one of the following two events occur within 12 months of the provisional application filing date:
    1. A corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or
    2. A grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.
  • Provisional applications for patent may not be filed for design inventions.
  • Provisional applications are not examined on their merits.
  • Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
  • It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
  • In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
  • If there are multiple inventors, each inventor must be named in the application.
  • All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
  • The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
  • A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
  • There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
  • Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
  • No information disclosure statement may be filed in a provisional application.

How do I file a provisional patent application?

The provisional application papers (written description and drawings) filing fee and cover sheet can be filed electronically using EFS-Web or filed by mail. Generally, electronic filing provides the most cost effective and efficient filing of a provisional patent application. EFS-Web allows patent applications, including provisional applications, to be filed securely via the Internet.  Applicants prepare documents in Portable Document Format (PDF), attach the documents, validate that the PDF documents will be compatible with USPTO internal automated information systems, submit the documents, and pay fees with real-time payment processing.  When fillable EFS-Web forms are used, the data entered into the forms is automatically loaded into USPTO information systems.  Further information on EFS-Web is available at:

 http://www.uspto.gov/patents/process/file/efs/guidance.

Additionally, provisional application papers may be filed by traditional mail at:

Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450

What are the features of a filed U.S. provisional patent application?

  • Provides simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to higher cost of filing and prosecuting a non-provisional application for patent.
  • Establishes official United States patent application filing date for the invention.
  • Permits authorized use of “Patent Pending” notice for 12 months in connection with the description of the invention.
  • Begins the Paris Convention priority year.
  • Enables immediate commercial promotion of invention with greater security against having the invention stolen.
  • Permits applicant(s) to obtain USPTO certified copies.
  • Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).

What warnings relate to provisional patent applications that I should know?

A provisional application automatically becomes abandoned when its pendency period expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional application filing.

Beware that an applicant whose invention is “in use” or “on sale” (see 35 U.S.C. §102(b)) in the United States during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. 102(b)).

Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000.

Independent inventors should fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.