U.S. PROVISIONAL PATENT APPLICATION

Under U.S. law, inventors have the option of filing a provisional utility patent application that is designed to provide a lower cost first patent filing in the United States and to place US inventors on equal footing with foreign inventors. A non-provisional utility patent application must be filed within one (1) year from the filing date of the provisional patent application. If used correctly, a provisional patent application can be an effective patent filing. If used incorrectly, a provisional patent application can create a forfeiture of patent rights.

  • Advantages of filing a provisional utility patent application versus a non-provisional utility patent application:

    1. It allows filing without a formal patent claim, an oath or declaration, or any information disclosure (prior art) statement.
    2. The government filing fee is $130 (Small Entity) versus $800 (Small Entity) for a non-provisional (complete) patent application.
    3. It provides the means to establish an early effective filing date in a later-filed non-provisional patent application. Specifically, Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date.
    4. It also allows the term "Patent Pending" to be applied in connection with the invention.
    5. The resulting publication of the non-provisional patent application or issued patent would be treated as a prior art reference under 35 U.S.C. ยง102(e) as of the earlier provisional application filing date.
    6. The twenty (20) year patent term is measured from the filing date of the later filed non-provisional application thus providing an additional one (1) year of protection.

  • Disadvantages of filing a provisional utility patent application versus a non-provisional utility patent application:

    1. The subject matter of a provisional utility patent application must fully disclose the subject matter claimed in the later filed non-provisional utility patent application in order to receive the benefit of the earlier filing date. Many company's offer low price provisional patent applications for what appears to be a small amount of money. Such applications often do not fully disclose the invention. As such, any later filed non-provisional utility application will not be entitled to the earlier filing date. This can result in the forfeiture and/or loss of US and foreign patent rights.
    2. Provisional utility applications are not examined. Depending upon your business plan, it may be prudent to file a non-provisional utility application so the claims are examined as soon as possible.
    3. Any foreign national application or PCT application claiming priority to the provisional application MUST be filed within one (1) year from filing date of the provisional application rather than a later filed non-provisional utility application.