subject: Filing A Provisional Patent Application [print this page] Filing A Provisional Patent Application Filing A Provisional Patent Application
You have an invention but you're not yet ready to file a formal patent application. You ask "Is there anything I can do to protect myself until I file a formal patent application?" Congress may have provided an answer in the form of a "provisional patent application".
A "provisional" application is a "light" version of a formal patent application. Like an actual patent application, a provisional is filed in the Patent Office, and will serve to provide a date of invention, and a priority date. Unlike an actual application, a provisional application will not be examined by the Patent Office, and therefore can never issue into a United States Patent. Unless followed by an actual patent application within one year, the provisional application will be discarded by the Patent Office, and it will have no value to the inventor. If the inventor fails to file a formal patent application within one year, the provisional application cannot be revived.
Also, an inventor filing a provisional application should also be sure that the formal patent application is filed less than one year after any sale or public disclosure of the invention. Under U.S. Patent laws, a formal patent application must be filed less than one year after a sale or public disclosure of the invention. Filing a provisional application will not stop the clock from ticking. If a provisional patent application is filed, a formal patent application must still be filed within one year of the sale or public disclosure.
Format of the Provisional
According to the statutes, the provisional application should follow the same format as an ordinary patent application, except that the claims may be omitted. However, the statute specifically requires that the provisional application fulfill the first paragraph of section 112 of the patent laws. The statute requires: "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention."
In other words the statute has two requirements for the specification (the written description of the invention): that it be "enabling" and that it set forth the "best mode" of the invention. These terms are not new to those familiar to patent law, since section 112 is a fundamental part of the law governing the content of patent applications in general. Each of these terms should be examined separately to determine what each requires of the applicant.
Enabling: when describing the invention, the inventor must give sufficient detail so that another person in the field of the invention could actually build and use the invention.
Best mode: the inventor must not conceal any information concerning the best way of making and using the invention. For example, if the inventor knows that a certain part would be better constructed out of a material different than the one specified, then the inventor is not setting forth the "best mode" of the invention.
Provisional applications must also contain drawings, "when necessary to understand the subject matter of the invention". In other words, if people can't understand your invention from your description, you must provide drawings. To satisfy the enablement requirement discussed above, drawings should be provided to make it clear how your invention is composed and how it operates. It is always helpful to provide at least a rough sketch, except if its inappropriate to the invention.
Since the provisional application is new to United States patent law, it is uncertain how strictly the courts will interpret these requirements in provisional applications. The Patent Office has indicated that provisional applications will be treated the same as formal patent applications with regards to the requirements of section 112. Indeed, one of the purposes of the provisional application is to relax the requirements of a formal patent application to allow inventors to file some sort of application on their own. The inventor should keep in mind that the provisional application will never be "examined" in the way that a formal patent application would be. Therefore the inventor can probably satisfy these requirements, even if the details of the invention are crudely presented. Grammar and punctuation are unimportant, as long as the proper details are somehow presented through some combination of description and drawings.
A complete provisional application includes a cover sheet, a specification, any necessary drawings, and the provisional application filing fee. A small entity statement should also be included to allow the inventor to pay the reduced filing fee. The Patent Office will provide a cover sheet that may be used to simplify filing. However, it is not necessary that the inventor use to PTO supplied cover sheet. The cover sheet must contain certain information to allow the Patent Office to identify and process the application, and must contain the residence of each named inventor. Thus, for simplicity it is suggested that the inventor use the PTO cover sheet.
Filing date: The same requirements are present to accord the provisional application a filing date, except that a formal application must be filed with at least one claim in order to be given a filing date. In addition, no oath or declaration is required. Section 1.53 of the Patent Office rules sets forth the requirements for a filing date. In general, the provisional application must have a written description, any necessary drawings, and the name of at least one of the inventors.
Conclusion
The provisional application is a popular option for those unsure of how seriously they will pursue their inventions. After the provisional application is filed, the inventor may further investigate the market to determine if filing a formal patent application is worthwhile. The provisional application will provide some protection for an inventor who is afraid that others might beat him to the Patent Office.
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