In the world of patents, the filing date of the patent is one of the keys to a successful patent application. The party who files the patent first on any particular invention may claim to be the inventor and reap the subsequent rewards. Provisional patents were made an option for United States (US) patent filers starting in 1995. They offer cost savings, time advantages, term benefits and promote early commercialization. They were designed to put US patent filers on an equal footing with foreign filers.
Provisional patents are issued for one year. Within that year, an application for a non-provisional patent must be filed with the United States Patent and Trademark Office (USPTO). When the non-provisional patent is examined, the provisional patent application date will be used to determine patentability. Should a patent be issued, the 20-year patent term will commence with the date of the non-provisional patent application.
A provisional patent application requires significantly less financial investment. Filing fees are less, and the application process itself is simpler. The provisional patent application does not have as many requirements as the full application. No formal claims, oaths or declarations are required, for instance. Additionally, no information disclosure or prior art statement is necessary.
To claim the benefit of the earlier application date, the non-provisional patent must be adequately supported by the provisional patent application by a full description of the invention and the full statement as to the scope of the invention. Only the common subject matter between the two applications will enjoy the earlier date of the provisional patent application.
In addition to the costs and time benefits of the provisional patent application, the invention may be marketed and referenced as "Patent Pending" in any descriptive materials. As such, an inventor could file a provisional patent application while creating investor interest or raising other research funding. Additional inventions and claims discovered in a 12-month period beyond the original filling would require separate provisional patent applications or be included in the non-provisional patent applications without the benefit of the earlier patent application date.
Some precautions are in order. Should a non-provisional patent not be filed within 12 months, the provisional patent application may be considered prior art. Also, non-provisional patents are not issued for design patents. Provisional patent applications may be converted to non-provisional applications without separate application by filing a grantable petition of such a conversion. The earlier provisional application date is lost under this procedure.
