What is a Provisional Patent–Should Small Business Use it?

If you are not that sure about the different types of patent applications and how they are used maybe we should start on the provisional patent application. The subject of the proper use of a provisional patent application is an important one and we will spend a little time on it. We will try to get  into all of those considerations - but let's first talk some background and define what a provisional patent application is. 

Some Background on the Provisional Patent

The US Patent and Trademark Office (USPTO) has offered this option since 1995 (June 8th). It was designed to give patent applicants a lower-cost initial filing in the United States. Notice I said initial filing. There is no assurance the overall cost of obtaining a final patent will be lower. In fact it could be slightly higher. But in many cases it has resulted in cost savings because the applicant has decided later, for either market or technical reasons, to not file a follow-up regular application and thus did save overall cost. This is the "poker" approach to filing a patent - ante up a smaller fee for a provisional and then you get to look at a few more cards before you make you decision to file the more expensive non-provisional. 

Many patent practitioners (patent attorneys and patent agents) will tell you that their views about provisional patents have changed over the years. There were many practitioners who simply would not write provisional patents at first because there was little case law about how provisional patents  would be interpreted in court cases and therefore could get you in trouble. And there are still varied views regarding how provisional applications should be written. 

How You File a Provisional Patent Application ?

The applicant files an application under 35 U.S.C. 111(b) - which defines the rules. 35 U.S.C. 111 allows a filing without a formal patent claim, without an oath or declaration, and without any information disclosure statement (IDS). It allows the applicant to use the term patent pending immediately after filing.

Once you have filed it you then have a maximum of 12 months to file a standard non-provisional application for patent. When you do that you can then claim the "benefit" of the earlier filing, meaning you can claim the provisional filing date as your priority date.

As a result of this the non-provisional patent application is evaluated by the examiner as though filed on the earlier date, thus eliminating any prior art that was published during that 12 months; in addition the twenty-year patent term is measured from the later non-provisional application so the applicant is on an equal footing with foreign applicants with respect to patent term.

That is a start on the provisional patent application. We will expand on these thoughts and possible problems to avoid in in a Part II and maybe a Part III later.

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