Additionally, there are two types of international patent
applications:
- Paris Convention patent applications
- PCT patent applications
Provisional
patent applications (PPA)
Starting in June of 1995, inventors in the United States
have been able to file provisional patent applications. Provisional
patent applications (also called a PPA), are a cost saving
advantage over other costlier patent applications. The filing
fee for a provisional patent application is only $100 for
small organizations or sole inventors and $200 for large
organizations.
Requirements for a filing date
A provisional patent
application has fewer requirements than a non-provisional
patent application.
For
example, you
can still obtain a filing date for your provisional patent
application without providing an abstract
of the invention, claims, information disclosure statement
regarding the prior art, or an inventor's oath or declaration.
In order to obtain a filing date for your provisional application
all that is needed is some type of description, an informal
drawing (only if necessary to describe the invention),
a cover sheet, and a return receipt postcard. It is important
to note that 35 USC Section 113, only requires a drawing
if
it is "necessary" for
the understanding of the invention. I have filed
many provisional and non-provisional applications that did
not have any drawings.
Effect of a Provisional Patent Application
A provisional
patent application gives an inventor one year to file a
non-provisional
patent application, and claim
benefit
of the filing date of the provisional patent application.
By filing a provisional patent application, an inventor
can
label an invention as "patent pending," and explore
whether filing a non-provisional patent application is a
good
idea.
A provisional application for patent (provisional application)
has a pendency lasting 12 months from the date the provisional
application is filed. The 12-month pendency period cannot
be extended. Therefore, an applicant who files a provisional
application must file a corresponding non-provisional application
for patent (non-provisional application) during the 12-month
pendency period of the provisional application in order to
benefit from the earlier filing of the provisional application.
The corresponding
non-provisional application must contain or be amended to
contain a specific reference to the provisional application
within the time period and in the manner required by 37 CFR
1.78.
Claiming priority back to your provisional application
While you can claim priority back to your provisional patent
application from your non provisional application (e.g., utility
patent application) your provisional
application cannot claim the benefit of a previously-filed
application, either foreign or domestic. Thus the filing
date of your provisional patent application will be the earliest
possible filing date you can claim.
A claim
for the benefit of a prior provisional application must be
filed during the pendency of the non-provisional application,
and within four months of the non-provisional application
filing date or within sixteen months of the provisional application
filing date (whichever is later). See 37 CFR 1.78 as amended
effective November 29, 2000.
A non-provisional patent application can claim priority
to the filing date of a PPA only if it complies with the
legal
requirements of 35 USC Section 112, paragraph I, which
states:
"The specification shall contain a written description
of the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it pertain,
or with which it is most nearly connected, to make and use
the same, and set forth the best mode contemplated by the
inventor of carrying out his invention."
It is thus vitally important
to ensure that a provisional patent application fully describes
all features and benefits
of an invention, and additionally explains how to make a
working version of the invention. A common misconception
is that a
provisional patent application is always a "quick" patent
application or a "poor man's patent." While less
time can be spent drafting claims and providing alternative
forms
of
the invention,
and there are smaller fees associated with a PPA, a provisional
patent application must describe all of the features and
benefits of an invention to allow subsequent patent applications
to
claim the benefit of the priority filing date of the provisional
patent application. A provisional patent application is
not
examined by the USPTO, and a patent will not issue from a
provisional patent application without filing a non-provisional
patent application within a year.
Advantages of Filing a Provisional Patent Application
There can be many advantages to filing a provisional
patent application.
The main advantage of filing a provisional patent
application is that it buys the applicant time. Provisional
patent applications can be a quick way to establish a filing
date. The inventor then has 1 year to do what is needed to
fully prosecute a regular patent application. For example,
the inventor may want to test and fine tune his invention,
assess the commercial success of
the
invention, or raise money for the manufacturing and marketing
of his invention. All of these can be done while
delaying
the costs associated with filing and prosecuting a regular
patent application.
Another related advantage is that the filing of your provisional
patent application constitutes a "reduction to practice"
so that you do not have to actually build a prototype of
your invention. The filing of a provisional patent application
constitutes a reduction to practice as long as it completely
describes the invention as claimed in the later filed
utility patent application.
Additionally, a provisional patent application can
be used to easily remove USPTO references cited against your
later filed related regular
patent
application.
For example, if
the USPTO cites a publication dated February 1, 2006 and
your non-provisional patent application claims priority back
to a provisional application filed on January 1, 2006,
the February 1, 2006 publication cannot be used to block
your patent application.
One alleged advantage commonly put forth is
that a provisional patent application
can be used
to effectively "extend the life of
a patent."
As will be discussed further, this argument is not entirely
convincing. The argument that a PPA extends a patent's
life is usually presented as follows. A complete patent application
is drafted in
final
form (with
claims) and then submitted as a provisional
application.
At the end of the 12-month deadline period,
a regular non-provisional application,
claiming priority to the provisional patent application
is filed. If the regular application
matures into an issued patent, it will
expire
21 years after the provisional application was filed.
Thus you get a 21 year patent term from filing instead of
20 years.
The problem with this argument is that you cannot file a
patent infringement suit based on a provisional patent application
(or non-published regular patent application for that matter).
In fact, the earliest that damages from patent infringement
can begin accruing is when the non-provisional patent application
publishes
and only if certain
conditions
are met (e.g., providing notice to the infringer).
As you cannot recover damages for infringement that occurs
during the pendency of your provisional patent application,
you are not effectively extending the term of your patent
life. In fact because your provisional patent application
is never examined and can never become a patent, filing a
provisional patent application actually delays the issuance
of your patent and accordingly delays the right to sue for
infringment.
Utility
patent applications
A regular non-provisional patent application, also called
a utility patent application, is examined by the US Patent
and Trademark Office and
can lead to an issued patent. The invention must be new,
useful and nonobvious. A utility patent application can
claim benefit
of the filing date of a provisional patent application if
the provisional application fully describes the invention
later described in the utility patent application. As a utility
patent application has a required formal format and contains
claims which define the extent of your invention, it is recommended
to utilize a patent professional when preparing and filing
a utility patent application. A utility patent is valid for
20 years from the filing date of the application.
Design patent
applications
A design patent application is used for a new, useful, and
ornamental or aesthetic article of manufacture. A design
patent
application contains a set of drawings that show your invention
from all sides. Unlike a utility patent application, which
relies upon a written description and claim to define the
invention, a design patent application focuses more on drawings
to describe the scope and features of an invention. A design
patent is issued for the design itself, not for any useful
features
or benefits described by the drawings. A design patent is
valid for 14 years from the date of issue of the patent.
Plant patent
applications
A plant application is similar to a utility patent application,
except that it is for asexually reproducible plants. These
include plants that reproduce by root cuttings, grafting,
rhizomes, bulbs and other methods. A plant patent application
requires that the application must contain a complete botanical
description of the plant, and the characteristics which distinguish
that plant over known related plants. A plant application
is valid for 20 years from the filing date of the application.
Paris Convention patent
applications
Within one year of filing a patent application in the United
States, the Paris Convention allows the filing of patent applications
in directly in other countries and claim the benefit of the
priority of filing date in the United States. Full applications
are filed in these countries, and examination of the application
generally is not deferred. Paris Convention patent applications
are often used when an applicant only wants to file in several
countries, or if a desired country is not a member of the
PCT. The costs of filing and length of patent examination
varies by country.
PCT patent applications
A Patent Cooperation Treaty (PCT) application must be filed
within 1 year of filing a patent application in the United
States. A PCT application is first briefly examined on an
international level, and thus allows the applicant to delay
costly filings in other countries. A PCT patent application
can delay filing a patent application in other countries for
up to 30 months from the original filing date in the United
States. Some countries additionally allowed for deferred examination
of a PCT patent application, which can defer examination for
another 3-4 years.
PCT applications provide several benefits to applicants.
First, it allows the applicant to delay the large cost of
filing applications around the world. Second, it allows the
applicant two opportunities for international examination,
which will give an early indication of patentability. Third,
it allows the applicant to see how their patent application
does in the United States. Grant of a patent in the United
States does not guarantee patentability in other countries,
however it does give an indication of patentability. Fourth,
some countries will allow a granted United States patent to
be filed as an amended patent application through the PCT,
thus savings costs and time in obtaining a patent in those
countries.
Please visit our patent resources page to view a list of useful websites: Patent
Information
