Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost, alternative to a utility patent. 

A provisional application for patent is a U. S. national application for patent 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 non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term "Patent Pending" to be applied.

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 utility patent 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. 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 utility patent application by filing a complete utility patent application and a petition under 37 CFR §1.53(c)(3) within 12 months of the provisional application filing date.

By filing a provisional application first, and then filing a corresponding utility patent applapplication that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months. The total patent period  for an an invention therefore may be 21 years (20 yrs for a the utility patent pendency period  plus 1 yr. for the  maximum allowable pendency period of the provisional patent application). 

What are the main benefits of filing a provisional patent application?

1.       While the U.S. patent process is often referred to as a ‘first to invented system” , in reality it is a ‘first to file’ system.  This means that the first party to file a provisional, utility, or design patent application for an invention with the USPTO has first rights to it.  The main benefit for filing a provisional patent application is that it provides a way to quickly file a less expensive application.  When you file a properly prepared provisional patent application,  your invention obtains PATENT PENDING status.   

2.       Allows the inventor to discuss the invention with others and begin commercially promoting, selling the invention without losing his or her patent rights to the invention.

3.   Allows the inventor more time to further develop or improve the invention before filing a utility patent application.

What is required for filing a provisional patent application?

You should think of a provisional patent application as a partially completed utility patent.  It must contain most of the information found in a utility patent application.  It order to understand was is required in a provisional patent application, you must understand what is required in a utility patent application. 

      Generally, a utility patent must include a written description of invention and a set of drawings that adequately support the subject matter recited in the ‘claim section’ in the application.  The written section of the utility patent application, called the Specification, must be sufficiently written  in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. See 35 U.S.C. 112, 1st paragraph.

The main difference between a utility patent application and a provisional patent application is that the provisional patent application DOES NOT require a set of claims.

When must the provisional patent application be filed?

It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (These pre-filing disclosures, although protected in the United States , may preclude patenting in foreign countries.)

Who can file a provisional patent application?

The provisional application must be made in the name(s) of all of the inventor(s)

What exactly is filed with the USPTO to obtain a filing date for a provisional patent application?

The package must include the following:

• 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

filing fee as set forth in 37 C. F. R. 1.16(k) and

 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 US Government agency that has a property interest in the application.

• Cover Sheet:   Form PTO/SB/16, available on the printable forms page of the USPTO website at www.uspto.gov/web/forms/sb0016.pdf, may be used as the cover sheet for a provisional

Please Note:  If either of these items are missing or incomplete, no filing date will be accorded to the provisional application.

Cautions

• Provisional applications are not examined on their merits.
• The benefits of the provisional application cannot be claimed if the one-year deadline for filing a non-provisional application has expired.
• Provisional applications 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.
• The inventor(s) named in the provisional application must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the application.
• The non-provisional application must have 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.
• Provisional applications for patent may not be filed for design inventions.
• 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.
• 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.

Fee

plication for patent can be found on the fee page (see 37 CFR 1.16(k)). USPTO Contact Center (UCC) customer service representatives are available Monday through Friday (except Federal holidays) at 800-786-9199 to provide fee information. Payment by check or money order must be made payable to "Director of the U.S. Patent and Trademark Office".  Mail the provisional application and filing fee to:

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

Features

• provides simplified filing with a lower initial investment with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;
• establishes an official United States patent application filing date for the invention;
• permits one year’s authorization to use "Patent Pending" notice in connection with the invention;
• begins the Paris Convention priority year;
• enables immediate commercial promotion of the invention with greater security against having the invention stolen;
• preserves application in confidence without publication in accordance with 35 U.S.C. 122(b), effective November 29, 2000;
• permits applicant to obtain USPTO certified copies;
• allows for the filing of multiple provisional applications for patent and for consolidating them in a single §111(a) non-provisional application for patent;
• provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).

WARNINGS

A provisional application automatically becomes abandoned when its pendency 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 one-year provisional-application pendency period may lose more than the benefit of the provisional application filing date if the one-year 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.