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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 patent application (PPA) which was designed to provide a lower-cost way to obtain a first patent filing in the United States.
A PPA is a U. S. national patent application filed in the USPTO. It allows the securing of a first filing date 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 (non-PPA). It should be explained that when a non-PPA references the PPA it can, under certain conditions explained below, claim the benefit of the PPA’s filing date, thereby creating an ‘effective filing date’ for the non-PPA that is equal to the filing date of the PPA. It also allows the applicant use the "Patent Pending" notice in connection with products based on their invention.
A PPA has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended under any circumstances. Therefore, an applicant who files a PPA must file a corresponding non-PPA for patent (non-PPA) during the 12-month pendency period of the PPA in order to benefit from the earlier filing of the PPA. In accordance with 35 U.S.C. §119(e), the corresponding non-PPA must contain or be amended to contain a specific reference to the PPA.
Most individual inventors find that PPAs are an attractive proposition as an apparently low-risk way to protect their invention initially. The usual reason is to commence some sort of guerilla marketing plan on extremely low budgets. Most would rather spend there very limited resources on the costly endeavor of making and selling an invention, rather than legally protecting it well. Of course, like any decision, an opportunity-cost analysis is required to make a more optimal choice that is inline with your particular goals and circumstances.
An individual inventor, as a small entity, can file a PPA for a nominal cost (currently $80), which is much less than the fee for a non-PPA (currently $370). However, the main benefit most individual inventors value more significantly, beyond the simplicity in filing the PPA, is that various amounts of patent attorney or agent fees can be deferred; anywhere from $1,000 to $11,000 for drafting and filing your non-PPA.
Provisional Patent Application (PPA) Characteristics
These following list enumerates the main characteristics of a Provisional Patent Application (PPA)
When a PPA May Be a Good Choice
There are certain circumstances where a PPA is an especially good choice. The most common situations are as follows:
For many inventive entities, the main motivations to file a PPA are when the market they are targeting is relatively uncertain, but may be assessed within a year; and when they wish to protect their invention in the US and internationally, but believe public disclosure of their invention is eminent, whereby there is insufficient time to file a non-PPA.
When a PPA May Not Be a Good Choice
In many ways, a PPA is like an insurance policy; and, like all insurance policies, there is an additional cost, usually hidden however, to avoid the upfront risk of investing significant funds in the filing of a non-PPA before it is either justified or practical. However, usually these hidden costs in filing a PPA instead of a non-PPA occur in the inherent lower quality of the PPA when, to save upfront expense, a corresponding claim set is not prepared. The problem is that, in general, the invention that is protected by patent law is defined by the claims, and not the patent disclosure. Often in the process of drafting the claims, the invention becomes clearer, and drives a supporting disclosure that permits a broader claim scope than would have otherwise been possible. The result of not preparing claims in a PPA is likely a narrower patent because no new matter may be added to a non-PPA claiming the benefit of an earlier PPA’s filing date.
Moreover, applicants seeking to reduce upfront cost by filing a PPA instead of a non-PPA are more likely to avoid performing a thorough prior-art search. Similar to the prior analysis, the hidden cost of avoiding a prior-art search, is that the drafted claims, whether in the PPA or the non-PPA, will not reflect (i.e., designed around) the more limited scope that the prior-art permits, and will, thus, result in increased prosecution cost. There will also usually be a corresponding increase in the prosecution history estoppels created through the additional arguments and amendments made therein, thereby diminishing the resultant value of the issued patent.
Another drawback to a filing a PPA concerns a reduction in the patent practitioners time spent in developing and drafting the application. Usually a skilled patent practitioner will be quite effective at leading the inventor to undisclosed details, variations, and alternative embodiments of the invention that will broaden the patents scope and strengthen its disclosure. When the applicant is looking to cut upfront costs via a PPA, this valuable service may significantly limited or even cut out entirely. The result could be a much more narrow patent or significantly greater (e.g., double, or more) cost if separate patent applications must be filed to cover any new matter. In the worst case, the original disclosure in the PPA may not legally support any claims and any resulting patent could be ruled invalid if ever challenged.
Basic Points of Information
Filing Date Requirements
The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)
A filing date will be accorded to a provisional application only when it contains:
If either of these items are missing or incomplete, no filing date will be accorded to the provisional application.
To be complete, a provisional application must also include the filing fee as set forth in 37 C. F. R. 1.16(k) and a cover sheet identifying:
An official cover sheet may be found at the USPTO website.
Non-Provisional Patent Application Issues
Once a PPA is filed, an alternative to filing a corresponding non-PPA is to convert the PPA to a non-PPA by filing a grantable petition under 37 CFR §1.53(c)(3) requesting such a conversion within 12 months of the PPA filing date. However, converting a PPA to a non-PPA (versus filing a non-PPA claiming the benefit of the PPA) will have a negative impact on patent term. The term of a patent issuing from a non-PPA resulting from the conversion of a PPA will be measured from the original filing date of the PPA. By filing a PPA first, and then filing a corresponding non-PPA that references the PPA within the 12-month PPA pendency period, a patent term endpoint may be extended by as much as 12 months.
The later-filed non-PPA claiming the benefit of the PPA must include at least one claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention. See 35 U.S.C. 112, 2nd paragraph. Although a claim is not required in a PPA, the written description and any drawing(s) of the PPA must adequately support the subject matter claimed in the later filed non-PPA in order to benefit from the PPA filing date. Therefore, care should be taken to ensure that the disclosure filed as the PPA adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-PPA. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. See 35 U.S.C. 112, 1st paragraph.
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