Provisional patent applications can be a valuable tool for inventors. Such an application serves as a “place holder” for a later-filed nonprovisional (or utility) application. While inventors often debate the need to file a provisional application, filing a provisional application rather than going straight to a nonprovisional has several benefits.
1. Provisional applications establish a priority date. While it is not examined by the USPTO, a provisional application allows the researcher to establish a priority date for an invention that predates subsequent prior art from impeding patentability. One year after filing the provisional application, the researcher must file a nonprovisional application, which claims the benefit of the provisional filing, to maintain patent rights. If the one-year deadline is missed, patent rights that may have been afforded to inventions described in the provisional application as of the filing or priority date are lost and new prior art can be introduced.
To benefit from the filing date of a provisional, however, that provisional must adequately support and enable the subject matter claimed in the nonprovisional application. Simply put, the nonprovisional application can only claim the benefit of the provisional application’s filing date and disclosure if it supports the invention. This forms the basis of the 35 U.S.C. Section 112 written description requirement. How much support is required is a subject of constant debate but recent case law suggests that courts are becoming more strict on interpreting written description. Inventors are thus better off including more description in their provisional applications to maximize their chances of having their priority dates upheld. Failing to do so increases the risk that prior art disclosed after the priority date can impede patentability.
2. Provisional applications help buy you time. Provisional applications require only a minimal fee to be filed ($280 for large entity, $140 for small entity, and $70 for micro entity) and they provide a twelve-month window before the more costly utility and PCT applications need to be filed. During this window, inventors can find financing and generate more experiments to support the utility and PCT filings.
3. Provisional applications are not public. This means that a provisional patent application can be abandoned before the one-year mark and the information in that provisional will not become public. This is helpful, for instance, if an inventor has an idea but cannot generate enough data within that one year to support that idea. In those situations, the inventor could abandon the provisional and refile it when the necessary information is gathered.
4. Provisional applications can be updated with new information. From the time the first provisional application is filed to the one-year deadline of filing the nonprovisional application, the inventor can file multiple follow-on provisional applications to add data or information to that application. If the first provisional was filed only with hypothetical examples, follow-on applications can be filed with actual results of those examples. When filing follow-on applications, however, inventors should be mindful of having adequate support as discussed in the first point.
Provisional patent applications provide value benefits to inventors, such as establishing early priority dates and allowing the inventor time to either update the invention with follow-on applications or abandon it entirely without making it public. Careful attention, however, must be paid to making sure that the provisional application has sufficient disclosure in it so that a later-filed nonprovisional can benefit from its filing date.
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