Helpful Hints for Filing Provisional Patent Applications
Why would one file a provisional patent application?
Patent rights in the U.S. are granted to the applicant that is first to file for patent protection for an idea. A provisional patent application is an abbreviated utility patent application that will not be examined but does provide the applicant the right to establish an effective early filing date that can be used in a later filed non-provisional utility application. Thus, filing a provisional patent application can allow an applicant the ability to claim the right to patent protection against other applicants. A provisional patent application in most cases provides a lower cost option to protect rights quickly. A provisional patent application allows the term “Patent Pending” to be applied to the invention.
What is the difference between a provisional patent application and a utility application?
A provisional patent application is a simpler and less expensive manner of claiming priority but does not begin the review process for obtaining a full utility patent. A provisional application affords the right to claim priority while the exact details of the invention are refined. For a provisional application the drawings do not need to conform to USPTO standards and no claims need to be filed (though having at least one claim is recommended). All inventors need to be listed on a provisional patent application, but the inventors do not need to sign Declarations. No prior art should be cited. A full utility application involves the preparation of detailed claims and drawings as well as the filing of known prior art. A provisional application affords the applicant the right to claim priority and then within a year file the more detailed application.
Can a provisional patent application be filed for a design patent?
A utility patent application can claim priority to a provisional patent application, but a design patent application cannot claim priority to a provisional patent application..
What is needed to file a provisional patent application?
To file a provisional patent application, the invention cannot have been publicly disclosed (publication, public use, offer for sale) more than one year before the provisional application filing date. A complete, comprehensive written description of the invention is needed. Formal drawings are not required. At least one claim is recommended (and usually several) due to requirements in other countries in case the provisional application is used for priority purposes internationally. The provisional patent application must include the names and residential addresses of all of the inventors.
How can one reduce the cost of filing a provisional patent application?
A provisional patent application has minimal USPTO official fees. The applicant can reduce attorney fees by presenting to the patent attorney a complete description and drawings that are ready to file.
Can one file more than one provisional patent application for an idea?
More than one provisional patent application can be filed as the features of the invention evolve or change. The non-provisional utility application would need to be filed within one year of the filing of the first provisional application but can incorporate the features of any and all subsequent provisional application filings.
For how long does a provisional patent application in effect?
A provisional patent application has a pendency of one year from the filing date of the provisional patent application and cannot be extended.
What are the next steps after filing a provisional patent application?
Once or before a provisional patent application is filed, the applicant can begin a search of prior art in the field to ensure that the invention described is novel. Based on the references that arise in the search, an applicant may wish to revise the application to differentiate it from prior art. Once the invention is viewed as novel and complete, the applicant should work with an experienced patent attorney to revise the invention description, formalize the drawings, and define the claims of the invention. Once the application is complete, formal papers should be executed to prevent extra filing costs.
Call the attorneys at Collard & Roe, P.C. at 516-365-9802 or contact us online to schedule a consultation regarding provisional patent applications.