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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 first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

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 later filed non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied in connection with the description of the invention.

A provisional application for patent (provisional application) 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 non-provisional application for patent (non-provisional application) 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 non-provisional application by filing a grantable petition under 37 C.F.R. §1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.

However, converting a provisional application into a non-provisional application (versus filing a nonprovisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a nonprovisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application.

By filing a provisional application first, and then filing a corresponding non-provisional application 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.

Some advantages of filing a provisional application include:

Initial Lower cost and faster preliminary process, the provisional application filing fee is much less expensive than a Non-Provisional Patent Application, If the invention is one in which it is likely someone else my come up with the idea too (can be extremely useful in the now “first inventor to file” competitive race to patent an invention),it established and official early filing date (if a Corresponding Non-Provisional Patent Applications filed within twelve months of the Provisional Application date can have the benefit of “relating back” to the Provisional Application.), earlier use and marketing of the “patent pending” notice, delay of examination cost and certain filing fees, immediate acceptance  (Provisional Applications are not reviewed by USPTO examiners unless and until you decide to file a corresponding Non-Provisional Application. This saves you time and money associated with the application.), resolving any outstanding problems, earlier Patent Marking (a provisional application can be filed earlier than a regular application, avoidance of 102(b) event for foreign applicants, extending the patent term (A patent lasts for 20 years, measured from the date a full patent application is filed. By first filing a Provisional Application, which is valid for 12 months, you can effectively receive 21 years of protection, beginning with your provisional filing date), Provisional Application for patent does not compromise the confidentiality of your application since Provisional Applications are not published.

Some disadvantages of filing a Provisional Patent are:

Delay in Issuance of a Patent, higher total cost, potential accelerated loss of trade secret protection, risk of inadequate disclosure.

The Baker Law Firm, P.C. will be happy to discuss the advantages and dis-advantages of filing a Provisional Patent for your invention relating to the particular circumstances of your invention.


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