With the growing popularity of provisional patent applications, many
companies have been asking their patent attorneys about provisional
patent applications and their application in protecting intellectual
property rights.
Typically, a nonprovisional patent application is filed to obtain a
U.S. patent. However, a provisional application may be filed to
preserve certain rights and privileges for an applicant. A provisional
application can essentially be a scaled down version of a
nonprovisional application. Provisional applications require a
specification and drawings, but do not require claims nor an oath or
declaration. These applications are not examined on the merits by the
USPTO and automatically go abandoned after 12 months.
Provisional applications became available on June 8, 1995. Changes in
the patent laws provided that the term of U.S. patents begin on the
date of grant and end 20 years from the filing date. This change in
the U.S. patent term measurement put U.S. inventors at a disadvantage
to non-U.S. inventors. For example, an applicant who files in a
foreign country and one year later files in the U.S. (claiming
priority to the foreign application) gets a patent term that extends
21 years from his earliest filing date (the filing date of the foreign
application). However, an applicant who files first in the U.S.
obtains a patent term that only extends 20 years from his earliest
filing date. To combat this disadvantage, the patent laws were amended
to provide for priority to provisional applications without triggering
the 20-year clock on the patent term.
A provisional application cannot claim foreign priority, nor can one
claim the right of priority to an earlier filed U.S. application.
However, a nonprovisional application can claim the right of priority
to a provisional as long as it is filed no later than 12 months after
the filing of the provisional application. The claims in the
nonprovisional application must be fully supported by the disclosure
of the provisional application to obtain the benefit of the filing
date. Therefore, provisional applications require careful thought and
planning. Further, a single nonprovisional application may claim
priority to several provisional applications. Therefore, a series of
provisional applications followed by a nonprovisional application
claiming the benefit of the provisional applications' filing dates can
be viewed as an alternative to filing continuation-in-part
applications within 12 months. This procedure may be beneficial for
applicants that want the earliest possible filing dates, but are still
in the process of refining their invention.
A provisional application may be converted into a nonprovisional
application, and similarly, a nonprovisional application may be
converted into a provisional application. In practice, a
nonprovisional application would only be converted to a provisional
application in the rare instance that the Patent Office issues a first
office action within 12 months of the filing date. Alternatively,
conversion from a provisional to a nonprovisional application results
in the 20-year patent term limit calculated from the filing date of
the provisional application! Therefore, these conversions are rarely
performed.
Additional benefits of provisional applications include quick drafting
and filing to avoid statutory bars, no requirement for English
language translations, no publishing, automatic abandonment, and
filing fees of approximately one-fourth those of nonprovisional
applications.
Disadvantages of provisional applications include the increased
overall cost to obtain an issued patent and delayed examination that
postpones issuance of a patent.
In conclusion, the pros and cons of provisional applications must be
reviewed on a case by case basis and requires a clear understanding of
the applicant's goals by the patent attorney.
printer
friendly version