provisional patent application

Provisional Patent Application (PPA) Characteristics

When a PPA May Be a Good Choice

When a PPA May Not Be a Good Choice

Non-Provisional Patent Application Issues

General Overview

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)

provides an official filing date in the US for the invention
initiates the Paris Convention priority year;
applicant may use the "Patent Pending" notice for one year;
applicant may begin commercial promotion of the invention for one year with increased protection against invention theft;
lower upfront cost, and up to one year to determine the invention's commercial efficacy prior investing in the higher cost of a non-provisional patent application;
the application is held in confidence without any disclosure (e.g., publication per 35 U.S.C. 122(b), after November 29, 2000) until the issuance of a related patent;
many PPAs may be combined into a single §111(a) non-provisional patent application;

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

The benefits of the PPA cannot be claimed if the one-year deadline for filing a non-PPA has expired.
PPAs cannot claim the benefit of a previously-filed application, either foreign or domestic.
PPAs are not examined on their merits; thus, the issuance of any corresponding non-provisional patent will be delayed by a year.
Upon the issuance of patent, the PPA becomes public information.
It is recommended that the disclosure of the invention in the PPA be as complete as possible. In order to obtain the benefit of the filing date of a PPA the claimed subject matter in the later filed non-PPA must have support in the PPA.
If there are multiple inventors, each inventor must be named in the application.
The inventor(s) named in the PPA 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.
The non-PPA must have one inventor in common with the inventor(s) named in the PPA to claim benefit of the PPA filing date.
A PPA must be entitled to a filing date and include the basic filing fee in order for a non-PPA to claim benefit of that PPA.
There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the PPA.
PPAs for patent may not be filed for design inventions.
Amendments are not permitted in PPAs after filing, other than those to make the PPA comply with applicable regulations.
No information disclosure statement may be filed in a PPA.
A PPA cannot result in a U. S. patent unless one of the following two events occur within 12 months of the PPA filing date:

a corresponding non-PPA for patent entitled to a filing date is filed that claims the benefit of the earlier filed PPA; or
a grantable petition under 37 CFR 1.53(c)(3) to convert the PPA into a non-PPA is filed

Important Caveats

A PPA automatically becomes abandoned when its pendency expires 12 months after the PPA filing date by operation of law. Applicants must file a non-PPA claiming benefit of the earlier PPA filing date in the USPTO before the PPA pendency period expires in order to preserve any benefit from the provisional-application filing.
Beware that an applicant whose invention is "in use" or "on sale" (see 35 U.S.C. §102(b)) in the United States during the one-year provisional-application pendency period may lose more than the benefit of the PPA filing date if the one-year provisional-application pendency period expires before a corresponding non-PPA is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. §102(b)).
Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the benefit of a prior PPA must be filed during the pendency of the non-PPA, and within four months of the non-PPA filing date or within sixteen months of the PPA filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000.
Independent inventors should fully understand that a PPA will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the PPA process leaving the inventor with no patent.

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:

a written description of the invention, complying with all requirements of 35 U.S.C. §112 ¶ 1 and
any drawings necessary to understand the invention, complying with 35 U.S.C. §113.

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:

the application as a provisional application for patent;
the name(s) of all inventors;
inventor residence(s);
title of the invention;
name and registration number of attorney or agent and docket number (if applicable);
correspondence address; and
any US Government agency that has a property interest in the application.

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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