A provisional patent application is a preliminary step that allows inventors to secure an early filing date for their inventions. Unlike a non-provisional (or full) patent, it does not require formal claims or meet the same rigorous examination standards. It grants a “patent pending” status for 12 months, providing inventors time to develop their ideas further or seek investors without the fear of immediate disclosure.
Provisional Patent Requirements
A provisional patent application must contain a detailed description of the invention, ensuring that it meets the “best mode” and “enablement” standards. While claims are not mandatory, the description should comprehensively convey the invention’s nature and operation. Failure to adhere to these requirements may compromise the application’s effectiveness in future patent proceedings.
Beyond the description, a provisional application should include:
- Sufficiently disclose the scope of invention.
- Essential drawings for understanding the invention.
- A complete list of inventors.
- The appropriate filing fee
- A cover sheet that clearly identifies the invention.
There is no need for:
- Claims – A provisional patent application does not need to include claims.
- Abstract – Not necessary in a provisional specification.
Why File a Provisional Patent?
While a provisional patent does not grant the same exclusive rights as a full (non-provisional) patent, it offers significant advantages, particularly in the early stages of invention development. It can effectively forestall another inventor claiming to have had the same idea earlier. It could be considered the first step in acquiring a patent.
Primary Benefits of Filing a Provisional Patent:
Prioritization and Time Stamp
- Priority: Establishes a filing date, protecting against patent claims by others.
Cost-Effective Exploration
- Reduced Costs: Less expensive than a non-provisional patent.
- Market Testing: Can be used to gauge market interest before investing further.
Patent Continuation Options
- Foundation: Can be used as a foundation for a non-provisional patent.
- Multiple Applications: Can be used to file multiple non-provisional patents.
Defensive Strategy
- Prevention: Helps prevent others from claiming similar inventions.
- Negotiation: Can be a valuable asset in business deals.
How To File a Provisional Patent
Draft a Provisional Application: Include a detailed description, drawings (if applicable), and the invention’s functionality.
File with the Patent Office: Submit the application online with the required fee.
Receive “Patent Pending” Status: Instantly upon filing, providing some level of protection.
Convert to Non-Provisional Application: File a complete specification (non-provisional) within 12 months to retain the early priority date.
Forms to be submitted
- Form 1: Application for Grant of Patent
- Form 2: Provisional Specification
- Form 5: Declaration of Inventorship (with complete specification)
- Form 26: Power of Attorney for Patent Attorney/Agent (optional)
- Form 1 or assignment signed by inventors.
- Form 28: To be submitted by small entity (only required if you are claiming small entity status)
Eligibility Requirements of a PPA
Here are the eligibility requirements for a Provisional Patent Application (PPA):
Novelty
The invention must be new and not publicly disclosed before the filing date of the provisional patent. If the invention is already known or published, it may not qualify for patent protection.
Utility
The invention must have a specific, practical use and be functional in some way. It must demonstrate utility, meaning the invention should provide a real-world benefit or solve a problem.
Description
The Provisional Patent Application (PPA) must include a detailed description of the invention, sufficient for someone skilled in the field to understand and replicate it. While formal claims are not required, it should disclose enough information to support any future non-provisional patent applications.
Inventiveness (Non-Obviousness)
The invention must exhibit non-obviousness, meaning it should not be an expected or obvious variation of existing inventions or technologies. It needs to show an inventive step beyond what is already known.
Are Provisional Patents Publicly Accessible?
Provisional patent applications are not publicly accessible. They remain confidential throughout the 12-month period after filing. This confidentiality ensures that inventors can protect their ideas without public exposure until they decide to convert their provisional application into a non-provisional patent. If no complete specification vide non-provisional application is filed within the 12-month period, the provisional patent expires, and the details never become public.
However, when the provisional application is successfully converted into a non-provisional patent, the content originally filed may become part of the public record once the non-provisional application is published, typically 18 months after the earliest filing date.
How Priority Works Between Provisional and Non-Provisional Patents
If both a provisional patent and a full (non-provisional) patent application relate to the same invention, the non-provisional patent will take priority – but only if it properly references and builds upon the earlier provisional application.
Here’s how the scenario works:
1. Provisional Patent’s Role in Priority
- A provisional patent acts as a placeholder by securing an early filing (priority) date. This is critical in the “first-to-file” patent systems, such as in the U.S., where the earliest valid filing date can determine who ultimately gets the patent rights if there are competing applications.
2. How Priority Works When Moving from Provisional to Non-Provisional
- If a non-provisional patent application is filed within 12 months of the provisional patent, it can “claim the priority date” of the provisional filing.
- This means that even if another party files a non-provisional patent during the 12-month period, the non-provisional patent that builds on the provisional will have an earlier effective date and win priority.
3. Critical Requirements for Provisional Patent to Secure Priority
- The non-provisional application must be related to the same invention as described in the provisional filing.
- If the invention described in the provisional and non-provisional filings differ substantially, the non-provisional application will not benefit from the provisional patent’s priority date and may lose in cases of conflict.
Converting a Provisional Application into a Non-provisional Application
To convert a provisional application into a complete application i.e. non-provisional application, you can:
- File a complete specification within 12 months of the provisional application’s filing date
- Pay the excess page and claims fees, if any and examination fee for the application
- Include an amendment with at least one claim
- File an inventor’s oath or declaration as Proof of Right for making the application if required
- File declaration of inventorship in Form 5 while filing the complete application
- You can file the request for examination only after filing the complete specification
Converting a provisional application to a non-provisional application has some consequences, including:
- The patent term is measured from the original filing date of the provisional application
Provisional Application Towards First Filing Requirements for PCT and Conventional Applications
A provisional application is a preliminary application that can be filed to claim priority for a patent. It can be used in both conventional applications and PCT applications:
Conventional applications
A conventional application claims priority from another application filed in a convention country.
PCT applications
The Patent Cooperation Treaty (PCT) is administered by the World Intellectual Property Organization (WIPO). The PCT helps applicants seek international patent protection for their inventions.
Key Features and Benefits of Provisional Patents
Temporary Patent Protection: Provides a 12-month period for inventors to refine their product and prepare for full patent submission. This period can be extended only in extraordinary circumstances.
Patent Pending Status: Offers deterrence against potential infringers by signalling the invention is in the patenting process.
Early-Stage Filing: Secures the earliest possible priority date, which can be crucial in industries where timing matters.
Lower Cost and Requirements: Filing a provisional application is less expensive.
Flexibility in Disclosure: Inventors can choose to make public disclosures during the 12-month period without forfeiting patent rights, as long as a non-provisional patent follows.
Limitations of a Provisional Patent Application
Length of validity
A PPA is only valid for 12 months from the filing date. The applicant must file a complete specification as non-provisional application within this time to maintain priority rights and convert the PPA into a non-provisional patent. Failing to do so before the deadline could result in the loss of your idea.
Limited protection
A PPA must meet the same requirements as a full non-provisional application to get full protection. If important details are left out, another person may be able to receive a patent on those features.
Extra costs
The applicant may incur other costs that include patent searches, professional drawings, and the drafting cost of potentially revealing the invention.
Provisional Patent vs. Non-Provisional Patents
- Purpose: A provisional patent application establishes a filing date and patent pending status for an invention, while a non-provisional application is the final submission to the patent office.
- Examination: Non-provisional applications undergo a thorough examination process by the patent office, while provisional applications are not reviewed.
- Content: Non-provisional applications must follow a strict format, while provisional applications have simpler descriptions, and claims are optional.
- Cost: Provisional applications are generally less expensive than non-provisional applications.
- Deadlines: Inventors are required to submit a non-provisional application within one year of filing the provisional application.
- Market Research: PPA is useful for securing funding or conducting research, while a complete patent application, due to public disclosure, cannot avail market research.
- Filing Complexity: Provisional applications are less complex and require fewer details than non-provisional applications.
- Duration: A non-provisional patent provides up to 20 years of protection, while a provisional patent, which lasts for 12 months, does not directly result in a patent.
- Confidentiality: The content of a provisional patent is confidential, preventing public access until it is used in a non-provisional patent filing (published after 18 months).
What Happens If a Non-Provisional Patent Is Not Filed?
If inventors do not file a non-provisional patent within the 12-month period, the provisional application expires. Since the provisional application is confidential, no information about it becomes publicly available, and the inventor cannot claim the early filing date in future patent filings.
Does Filing a Provisional Patent Allow Public Disclosure?
Yes, filing a provisional patent permits public disclosure without jeopardizing the inventor’s rights. During the 12-month period, the “patent pending” status allows inventors to engage with investors and market the invention while still protecting its novelty. However, it’s essential that a non-provisional patent follows to maintain these rights.
Key Takeaway
Provisional patents offer a strategic advantage by securing an early filing date and enabling inventors to market their ideas while retaining confidentiality. However, this temporary protection only lasts for 12 months, so it’s crucial to plan for a timely non-provisional patent filing to maintain legal rights.
FAQs
1. Are provisional patents publicly accessible?
No, they remain confidential unless converted to non-provisional patents.
2. How long does a provisional patent remain confidential?
A provisional patent remains confidential for its entire 12-month lifespan and is not published unless referenced in a non-provisional application with complete specification.
3. What happens if I don’t file a non-provisional patent after my provisional patent expires?
If no complete specification vide non-provisional patent is filed, the provisional application expires, and the invention loses its priority date and protection without becoming public.
4. Does filing a provisional patent prevent others from accessing my invention?
Yes, the content of a provisional patent is confidential, preventing public access until it is used in a non-provisional patent filing.
5. Can I publicly disclose my invention after filing a provisional patent?
Yes, you can disclose your invention publicly during the provisional period, as long as a non-provisional patent is filed within 12 months.
6. Can I sell a provisional patent?
You cannot sell the provisional patent itself, but you can transfer ownership or assign the rights to the invention it covers to another party.
