Frequently Asked QuestionsAre provisional patent applications “easy” to write?
No. A provisional patent application is not some easy replacement for a non-provisional patent application despite what some people say. In other words, it takes a lot of work to prepare a competent provisional patent application. The main advantage for self-drafters is that provisional patent applications do not have “claims” which typically require a patent attorney to prepare. If you are considering self-drafting, please read the information at www.PatentWizard.com which is a software product developed by Michael S. Neustel.
Should I “self-draft”?
Self-drafting patent applications is not for everyone and should be thoroughly investigated before doing so. Valuable patent rights can be lost attempting to self-draft a patent application. Also, it is not recommended to self-draft a patent application if you do not have the “1-Year Safety Net” to protect you in case you make mistakes in your provisional application (in the U.S. you have up to 1-year from a “public disclosure” to file a patent application).
Below is a preliminary factor test to help determine whether or not you should self-draft a provisional patent application (you can rate each factor a value of 1 to 10 with 10 being the highest and 1 being the lowest):
- What is the value of your time (based upon income, personal free time, etc.)?
- What is the risk of writing a poor and inadequate patent application (based upon your writing and drawing skills, etc.)?
- What is the marketability of your invention?
- What is the patentability of your invention?
Can I draft a quality provisional patent application for my invention?
The answer to this question depends upon the quality of information that you enter into the provisional application template provided by Neustel Law Offices and the amount of time you expend in reviewing your provisional patent application. If you do not spend the required amount of time in writing the provisional patent application, the overall quality of the provisional patent application will suffer possibly resulting in the loss of patent rights in the future. It is highly recommended that you have a patent attorney review your provisional patent application prior to sending to the USPTO.
Who shouldn’t self-draft a patent application?
Individuals that are not skilled at expressing the structure, function, operation, and benefits of their invention in writing and in drawings should not self-draft a provisional patent application. As stated previously, the quality of the provisional patent application is directly dependent upon the quality of information and reviews by the inventor. Self-drafting is not for every inventor or invention. You need to make the final decision yourself prior to filing a provisional patent application.
Do I get a patent search for the fee I pay for filing my self-drafted provisional patent application?
No. If you would like a patentability search performed for your invention, you need to request one through Neustel Law Offices, LTD (see www.neustel.com/fees.htm for the patent search fees and options).
When did the U.S. Patent and Trademark Office begin the “provisional” patent application?
Since June 8, 1995, the U. S. Patent and Trademark Office (PTO) 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.
What is a “provisional” patent application?
A provisional application for patent is a U.S. national application for patent filed in the PTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides the means to establish an early effective filing date in a patent application and allows the term “Patent Pending” to be applied.
What are the benefits of filing a “provisional” patent application?
There are several benefits to filing a provisional patent application. Below is a listing of benefits that are recognized by the USPTO:
- Provides simplified filing with a lower initial investment with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;
- Establishes an official United States patent application filing date for the invention;
- Permits one year’s authorization to use “Patent Pending” notice in connection with the invention;
- Begins the Paris Convention priority year;
- Enables immediate commercial promotion of the invention with greater security against having the invention stolen;
- Provides the same confidentiality, access, and certified copies by PTO as §111(a) non-provisional applications for patent;
- Allows for the filing of multiple provisional applications for patent and for consolidating them in a single §111(a) non-provisional application for patent;
- Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).
How long does a provisional patent application provide “patent pending”?
The period of up to one year of pendency for the provisional application is excluded from the term calculation of a granted patent that relies upon the provisional application for patent, thus providing a term endpoint that is 21 years from the provisional application filing date.
Do I have to have professional patent drawings completed for my provisional patent application?
You do not need professional patent drawings for a provisional application. However, if your sketches are not adequate to fully illustrate your invention, then a professional draftsperson should be hired to prepare your drawings.
When does a provisional patent application become “expired”?
If the inventor takes no further action, the application will automatically be abandoned 12 months after the provisional application for patent’s filing date by operation of law or upon failure to correct informalities (e.g., pay filing fee or correct cover sheet error).
Can I revive an abandoned provisional patent application?
No. Once a provisional patent application is automatically abandoned 12 months after the filing date it is non-revivable and you will not be entitled to the filing date of the provisional patent application.
When must I file a “formal” patent application (i.e. non-provisional)?
The §111(a) non-provisional application for patent must be filed within 12 months of the provisional application for patent filing date to claim the benefit of the provisional application filing date. As always, consult with a patent attorney if you should have any questions.
Do I need to identify all of the inventors in the provisional patent application?
Yes. The provisional application for patent must be made in the name(s) of all of the inventor(s). The inventor(s) named in the provisional application for patent must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the application.
When can I file a provisional patent application?
It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (Note: These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.) You should consult with a patent attorney if you should have any questions.
What is required within the provisional patent application to receive a “filing date”?
A filing date will be accorded to a provisional application for patent only when it contains:
- a written description of the invention, complying with all requirements of 35 U.S.C. §112 ¶ 1;
- any drawings necessary to understand the invention, complying with 35 U.S.C. §113; and
- the names of all inventors.
- the filing fee as set forth in 37 CFR 1.16(k) and
- a cover sheet identifying the application as a provisional application for patent.
The cover sheet must identify:
- application as a provisional application for patent;
- inventor name(s);
- inventor residence(s);
- title of the invention;
- name and registration number of attorney or agent and docket number (if applicable);
- correspondence address; and
- any U.S. Government agency that has a property interest in the application.
Are provisional patent applications examined by the USPTO?
No. Provisional applications for patent are not examined on their merits.
Can a provisional patent application by itself issue into a U.S. patent?
No. A formal (non-provisional) patent application must be filed in order to receive a U.S. patent for your invention. It is recommended that inventors hire a patent attorney to draft the formal patent application.
When can I claim the benefits of a provisional patent application?
The benefits of the provisional application for patent cannot be claimed if the one year deadline for filing a non-provisional application for patent is missed. If the one year deadline for filing falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the non-provisional application must be filed prior to the Saturday, Sunday, or Federal holiday in order to be co-pending with the provisional application. Provisional applications for patent cannot claim the benefit of a previously filed application, either foreign or domestic. It is recommended that the disclosure of the invention in the provisional application for patent be as complete as possible. In order to obtain the benefit of the filing date of a provisional application for patent the claimed subject matter in the later filed non-provisional application must have support in the provisional application for patent. The non-provisional application for patent must have one inventor in common with the inventor(s) named in the provisional application for patent to claim benefit of the provisional application filing date. A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim the benefit of that provisional application. A CAFC decision recently handed down specifically addresses “priority” issues involving earlier filed “provisional” patent applications. In New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co., 298 F.3d 1290, 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002). The CAFC said: “As a part of the Uruguay Round Agreements Act, the Patent Statute was amended to allow applicants for United States patents to file provisional applications that could provide the priority date for a non-provisional utility application filed within one year of the provisional. See 35 U.S.C. 111(b). Such a provisional application need only include a specification conforming to the requirements of 35 U.S.C. 112.1 and at least one drawing filed under Sect. 113; no claims are required. 35 U.S.C. 111(b)(1), (2). However, for the non-provisional utility application to be afforded the priority date of the provisional application, the two applications must share at least one common inventor and the written description of the provisional must adequately support the claims of the non-provisional application”. Though this case discloses nothing “new” for individuals/entities experienced with provisional patent applications, it is a good “reminder” that a provisional patent application needs to be prepared to the same level/quality as a non-provisional patent application.
Do I need to include at least one “claim” within my provisional patent application for foreign priority purposes?
No. Some individuals feel that some foreign countries may not recognize a provisional patent application filed without claims. However, we are unaware of any case law or statute in a foreign country that would require the usage of a “claim” within a U.S. provisional patent application. In fact, adding a claim to a provisional patent application may create potential problems for future patents that claim priority from the provisional patent application based upon “prosecution history estoppel” arguments.
A well-known authority on International Patent Law states: “The World Intellectual Property Organization (WIPO), the responsible administrative agency for the Paris Convention, and the European Patent Office, moreover, have taken the position that provisional United States patent applications are regular national filings under Article 4 of the Paris Convention and are as a consequence adequate to establish a priority date.” BAXTER, WORLD PATENT LAW & PRACTICE (December 2001). BAXTER further states: “[T]he European Patent Office has acknowledged that the U.S. provisional application gives rise to a right of priority within the meaning of Article 87(1) EPC. Similarly, the International Bureau also has taken a position that a United States provisional application is adequate to support a claim to priority for an international patent application filed under the Patent Cooperation Treaty. Similarly, the International Bureau also has taken a position that a United States provisional application is adequate to support a claim to priority for an international patent application filed under the Patent Cooperation Treaty. The Japanese Patent Office officially declared that a U.S. provisional application will be considered to provide a basis from which a right of priority can be claimed under the Paris Convention.” BAXTER continues to state: “Provisional applications, although not published, and never, directly, form the basis for a granted patent, provide a basis for internal priority for a subsequent regular United States patent application and under the European Patent Convention and the Patent Cooperation Treaty authorities form a basis for convention priority. Other countries recognize a provisional application for claiming priority (e.g., Taiwan), for more details on this, see Chapter 10.” BAXTER further states: “Sections 111 and 119 of the patent law are amended to now provide for filing a provisional application. The intent is to establish a system of domestic priority which will place U.S. citizens on equal footing with foreign applicants who benefit from a foreign priority date but only have the patent term measured from the U.S. filing date, not the foreign priority date. The provisional application permits U.S. applicants to have the term of their patent measured from the filing date of a “regular” application, not a provisional application. Thus, the provisional filing does not serve as the basis from which the term of the patent is measured.” It should also be noted that Section 4801(a) of the “American Inventors Protection Act of 1999” amends 35 U.S.C. 111(b)(5) to provide that “[n]otwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under [35 U.S.C. 111(a)].” This clearly supports the position that a PPA should be considered as a formal patent application for foreign priority purposes.
Finally, including a “super broad” claim in a provisional application may result in the implication of Festo when a non-provisional is later filed with a narrower claim scope. See Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., — F.3d —-, 2003 WL 22358859, Fed.Cir.(Oct 17, 2003). Deering involved the deletion of a broad claim and the adding of a new narrower claim within the same non-provisional application. Even though Deering did not involve a provisional application, there is the real potential that a similar situation could occur where a later filed non-provisional application includes a narrower claim than the claim in the provisional (i.e. effectively deleting the broader claim and inserting a narrower claim). You should consult with a patent attorney before including a claim within a provisional patent application.
Can I file a provisional patent application for a “design” patent?
No. Provisional applications for patent may not be filed for design patents, only utility patents. Design patents only protect the overall appearance of your invention while utility patents protect the function and structure of your invention. Utility patents are the most common type of patent issued by the USPTO as they generally provided broader protection for most inventions. For more information on the differences between a design patent and a utility patent see www.neustel.com/patents.htm.
Can I amend my provisional patent application after filing?
No. Amendments are not permitted in provisional applications for patent after filing, other than those to make the provisional application comply with applicable regulations. You can simply refile the original provisional application with the amendments as a second provisional patent application (see next question below).
What should I do if I make improvements to my invention after filing my provisional patent application since I cannot amend the original application?
You should file another provisional patent application to include the new subject matter (i.e. improvements).
Can I file an information disclosure statement (IDS) with the provisional patent application?
No. Filing of an information disclosure statement in a provisional application for patent is prohibited.
Is the filing date of the provisional patent application my “priority date” for filing foreign patent applications?
Yes. If you filed a provisional application, your one-year period dates from the filing of the provisional application, not the regular utility patent application. If you are considering foreign patent protection you should speak with a patent attorney prior to filing your provisional patent application.
Will Neustel Law Offices, LTD be reviewing and modifying my self-drafted provisional patent application before they file it?
While we will ensure that the overall form of your application is proper for submission to the USPTO, Neustel Law Offices, LTD will not be reviewing your provisional patent application to ensure that it satisfies the legal requirements of 35 U.S.C. 112, first paragraph — that responsibility is solely with you. If you would like Neustel Law Offices, LTD to perform such a review, we can provide the same at our hourly rate and upon written request prior to filing the provisional application (see www.neustel.com/fees.htm for schedule of fees).