What is a provisional application and why is it important? Erwin K. Schultz, Ph.D., Certificate in Law student and Patent Agent, explains the process and the significance of provisional applications in his latest blog.
The United States Patent and Trademark Office (USPTO) offers Applicants/Inventors the option of filing a provisional application for patent which is designed to provide a lower-cost first patent filing in the United States.
A provisional application provides the means to establish an early effective filing date (i.e., a priority date) in a later filed non-provisional patent application (i.e., a regular application). The date of filing of the provisional application can also be used as the priority date for applications subsequently filed in countries other than the United States as well as for an international application.
A provisional application includes a description that must describe the invention in sufficient detail and in an enabling manner as well as drawings where necessary for the understanding of the subject matter sought to be patented, but does not require a formal set of claims. However, care should be taken to write at least a few claims to ensure there is proper support in the application for all the essential elements of the invention.
The filing of a provisional application also allows the term “Patent Pending” to be applied in connection with the description of the invention. A provisional application, as such, is never examined and does not mature into an issued patent unless a regular patent application is subsequently filed. There is no such thing as a provisional patent. The provisional application is also not "published", but becomes a part of any later non-provisional application file that references it.
A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding regular application for patent during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.
If a regular application claiming the benefit of the provisional application is not filed within the 12-month period from the date the provisional application is filed, the provisional application expires and ceases to exist without any public disclosure.
During the 12-month pendency period, the Applicant may further develop the invention, determine the commercial viability of the invention, conduct market studies, raise funds, obtain a license(s) and/or otherwise work the invention. Any new matter developed during the 12-month pendency period may be introduced in the regular application.
Provisional applications provide an important IP tool, especially within the context of university research. Oftentimes researchers are confronted with public disclosures such as a presentation at a conference or an upcoming publication of an earlier submitted paper. If a public disclosure is to be made, care should be taken to first file a provisional application.