Chemistry Reference
In-Depth Information
file a U.S. provisional patent application
26
A patent applicant may
to obtain a
U.S.
filing fee than with a nonprovisional application. A
provisional application is often the
filing date and pay a lower
filed. Later
nonprovisional applications (in the United States and internationally) can claim bene
first type of patent application to be
tof
the provisional application. Filing a provisional application has several advantages but
also carries some important limitations that the applicant must bear in mind.
One advantage is that the provisional application may be a
“
less formal
”
patent
filing requirements.
26
A provisional application must have a
written description of the invention that meets the requirements of 35 U.S.C. § 112,
paragraph (A), that is, a description of the invention such that one of ordinary skill could
practice the invention. Preparing such a description is what was discussed above. A
provisional application, however, does not require the format and organization of the
nonprovisional application. The description may be more like a scienti
application and has minimal
c paper, although
its disclosure must still meet these disclosure requirements. A provisional application
does not require patent claims, although many patent drafters include claims as they are
helpful when preparing the patent application and provide a more complete application,
especially if the provisional application is to serve as a priority document for subsequent
U.S. or international patent applications.
Another advantage of
filing a provisional application is obtaining a
filing date. This
filing date establishes
the date before which publications, patents, other patent applications, and so on may act
as prior art for determining the patentability of the invention. A provisional application,
however, is not examined, it is not published, nor does it become a patent.
A provisional application may serve as a
filing date stops the
“
prior art
”
clock. The provisional application
“
priority application
”
for a later
filed patent
application in the United States or internationally. The bene
t here is that the later
led
patent application will enjoy the bene
t of the provisional application
'
s
filing date for the
invention described in the provisional application.
Once
filed, a provisional application expires after 1 year. This means that a non-
provisional application claiming bene
t to the provisional application must be
led
during that provisional application year. If a nonprovisional application is
filed after the
provisional application expires, one cannot claim bene
t to the provisional application or
enjoy its earlier filing date. While a provisional application expires after 1 year, it does
not start the 20-year patent term. As mentioned above, it is the
filing date of the
nonprovisional application that begins the patent
term. Thus,
filing a provisional
application
led a
provisional application, an inventor can continue to develop the invention and/or explore
commercial opportunities before
first provides an additional year to the patent applicant. Having
filing a nonprovisional application.
ling date
without starting the patent term are some of the advantages of a provisional application.
Choosing to
The ability to
le a
“
less formal
”
patent application at lower cost and obtain a
file a provisional application, one must keep in mind its limitations as well,
chief among those are that a provisional application expires after 1 year and all action must
26
A helpful and more detailed discussion of U.S. provisional applications can be found at the USPTO website
(
www.uspto.gov
). One particular discussion can be found at
http://www.uspto.gov/inventors/independent/eye/
201004/provisional.html
(last accessed April 2, 2014).
