The Provisional Patent Application:
What You Need to Know
A provisional patent application (PPA) is a patent application that can be used by a patent applicant to secure a filing date while avoiding the costs associated with the filing and prosecution of a non-provisional patent application. More specifically, if a non-provisional application is filed within one year from the filing date of a PPA, the non-provisional application may claim the benefit of the filing date of the PPA. (Why filing dates for patent applications are important will be discussed below.) Because a PPA is not examined, an applicant can also avoid the costs typically associated with non-provisional patent prosecution (certain attorney's fees, for example) for a year while determining whether his/her invention is commercially viable. Further, because a PPA is not made public unless its application number is noted in a later-published application or patent, the failure by an applicant to file a non-provisional application based on his/her PPA will not lead to public disclosure of his/her invention.
What are the benefits of filing a PPA?
A PPA essentially provides a one-year extension as to the filing of a U.S. non-provisional patent application. In doing so, a PPA provides an applicant with an additional year to experiment, perfect an invention, find financial backers, determine sales potential, find interested parties for licensing, etc. before filing his/her non-provisional application. Because a PPA is not examined, an applicant can also avoid the costs associated with prosecuting a non-provisional application during this one-year period.
What are the possible pitfalls of filing a PPA?
There are no extensions on the one-year time limit for filing a non-provisional application claiming benefit of a PPA filing date. (see proposed change below) By law, either you file a non-provisional application within a year or you lose the benefit of the filing date. Importantly, most other countries usually base the time for filing a non-provisional application in their countries on the PPA filing date. This means that an international or foreign application may need to be filed at the same time that a non-provisional application claiming benefit of a PPA is filed in the U.S. Further, if the PPA does not adequately describe all that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the PPA filing date. This could affect patentability if a reference disclosing the later-described invention is published after the filing date of the PPA but prior to the filing date of a non-provisional application.
What are the minimum filing requirements for a PPA?
A PPA requires a coversheet (form SB/16 available at www.uspto.gov/forms), a written description that meets the requirements of 35 USC 112, first paragraph, drawings as necessary, and a fee submitted within the prescribed time limit. The written description should provide enough detail that would allow someone having ordinary skill in the same technology, the ability to make and use the invention. A PPA must disclose enough information that a person having ordinary skill in the same technology would recognize that the invention claimed in a later-filed non-provisional application is described in the PPA upon which it relies.
Why are filing dates important?
Filing dates set the date for constructive reduction to practice (i.e., the date upon which the invention is disclosed to a patent office as having been made), and in doing so, determine the date against which the invention will be tested for novelty and non-obviousness. How? Unless an inventor files evidence that his/her invention was actually made earlier than an application filing date, the filing date serves as the date before which publications, public use, and sales may serve as "prior art" against the invention. "Prior art" is used by patent offices, including the USPTO, to determine whether an invention is new and non-obvious. Thus, applicants want to secure the earliest filing date possible for their inventions to avoid the most prior art. Importantly, public disclosure of an invention in foreign countries may occur during the one-year period after the filing of a PPA in the USPTO. It is, therefore, important to understand how foreign patent offices determine when a public disclosure is made, to ensure that intellectual property rights are not lost in those countries.
Why do PPAs exist?
On June 8, 1995 the Uruguay Round Agreement Act was signed, which allowed countries to provide domestic priority for patent applications. This act provided U.S. patent applicants the same rights as applicants who file in other countries. It also established the statutory requirement that a non-provisional patent application must be filed within the one-year period in order to maintain the PPA priority date.
Here are some facts you need to know about PPAs.
- A PPA expires after one year.
- You cannot extend a PPA.
- You cannot renew a PPA.
- A PPA will never become a patent.
- You cannot file a PPA for a design .
- The USPTO does not examine PPAs .
- The USPTO does not conduct a prior art .search on PPAs
- The USPTO does review PPAs to make sure they meet minimum filing requirements.
- PPAs are not published by the USPTO (unless claimed as priority in a later-issued or published non-provisional application).
- You can use the term "patent pending" for the duration of the one-year pendency of a PPA.
The USPTO is considering a change that would effectively provide a 12-month extension to the 12-month PPA period. If adopted, this change would be implemented through the missing parts practice in non-provisional patent applications. The non-provisional application, therefore, would still need to be filed within 12 months after the date on which the corresponding provisional application was filed.
We are very interested in your comments on the proposed change in provisional practice. The instructions for submitting comments are in the Federal Register Notice, Request for Comments on Proposed Change to Missing Parts Practice, found at http://edocket.access.gpo.gov/2010/2010-7520.htm.