Although provisional patent applications may offer a number of benefits, a number of items should be carefully considered if such a filing is elected to avoid any adverse consequences.
Overview
1) Establish Priority: Provisional patent applications may establish an earlier “effective filing date” (or priority date) for a later filed: 1) non-provisional patent application; 2) application(s) filed in a foreign jurisdiction (non-U.S.); and 3) PCT application.
2) Must Subsequently File a Non-Provisional Patent Application (12 months): To avoid losing the priority date of the provisional patent application, a non-provisional patent application must be filed within 12 months from the filing date of the provisional application and must include a benefit claim to the provisional. The benefit claim to the provisional must be filed within four months of the non-provisional patent application’s filing date or sixteen months from the provisional patent application’s filing date (whichever is later). Additionally, the aforementioned 12 month period cannot be extended and the provisional application cannot mature into a patent as it becomes abandoned after the 12 month period.
3) Not Examined / Published: Provisional Applications are neither examined nor published by the United States Patent and Trademark Office (USPTO). Additionally, because provisionals are not examined, Information Disclosure Statements (IDS) should not be included therewith.
4) No Indication of Patentability: Because provisional applications are not examined, the Applicant is provided with no indication of patentable subject matter.
5) Can Not Claim Benefit to Earlier Filed Application(s): A provisional cannot claim benefit to an earlier filed domestic or foreign patent application.
6) Common Inventorship: A provisional and subsequently filed non-provisional patent application must share at least one common inventor between both patent applications.
7) Non-English Filing: A provisional may be filed in a language other than English. Further, a translation and statement that the translation is accurate does not need to be filed with the provisional (although it could be). However, to claim benefit to a non-english provisional in the subsequently filed non-provisional, a translation and a statement that the translation was accurate must be filed within four months of the non-provisional filing or sixteen months from the provisional filing (whichever is later). In view of the foregoing, an Applicant who has drafted a non-english patent application could file said application as a provisional and provide a translation, etc. at a later time.
Claims / Oath or Declaration - Not Required: Claims may be filed in a provisional; however, they are not required.
9) Design Patents: Provisionals cannot be utilized with design patents.
Legal
A provisional patent application is a U.S. national application for patent which is filed further to 35 U.S.C. 111(b) (whereas a non-provisional patent application is filed further to 35 U.S.C. 111(a)).
MPEP 601 – Content of Provisional and Non-provisional Applications indicates that a provisional patent application must satisfy the following statutory requirements:
“(b) PROVISIONAL APPLICATION …
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
(2) CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application….”
Additional provisional patent application filing requirements (e.g., cover sheet, government contract requirements, etc.) are included in MPEP 601.
Considerations
1) False Marking: Although an Applicant may utilize the designation “Patent Pending” after a provisional patent application has been filed, various consequences may arise if a product is marked or marketed with the aforementioned designation with the designation after the following events: a non-provisional application is not subsequently filed within 12 months of the provisional application filing date or after patent expiration.
Regarding false marking, ( 35 USC 292 – False Marking) states that:
“(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.
(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.”
2) Satisfy Statutory Requirements: As indicated above, although a provisional patent application is not required to contain any claims, it must satisfy various statutory requirements (35 USC 112, first paragraph / 35 USC 113) for the desired level of scope of the claimed subject matter in the subsequently filed non-provisional application. The aforementioned point cannot be stressed enough … the provisional application and non-provisional application must each satisfy the same statutory requirements ( written description / enablement / best mode).
In view of the aforementioned requirement, many patent practitioners believe that unless the Applicant believes that the specification of the provisional could be filed as the non-provisional, the provisionals effectiveness may be minimal in obtaining an earlier effective filing date, and may even invalidate the patent (see point 3 below).
Although identical disclosures are not required in both the provisional and non-provisional applications, failing to provide sufficient statutory support (written description / enablement / best mode / drawings) in the provisional for the claimed subject matter in the non-provisional could disallow the benefit claim to the earlier filed provisional.
Accordingly, in view of this requirement, it is uncertain whether a provisional filed with a few paragraphs of details and a rough sketch of one embodiment of the invention would satisfy the aforementioned statutory requirements if the later filed non-provisional application included a full claim set (~20 claims) and a few dozen pages of disclosure describing multiple embodiments.
3) Statutory Bar – Effective Filing Date: The statutory bar of 35 U.S.C. 102(b) denies a patent to an Applicant if the invention was in public use or on sale in the United States more than one year prior to the patent application filing date. This is especially relevant in the context of provisional applications if a court determines that a non-provisional should not be afforded priority to a provisional.
Further to the foregoing, if such a use or sale occurs and a court holds that a provisional application should not be afforded priority due to inadequate statutory support (e.g, 35 USC 112, first paragraph – written description / enablement / best mode) for the later filed non-provisional patent application, the patent may be invalidated if the use or sale was more than one year before the non-provisional filing date (as the provisional filing date in such a scenario would not be relied upon). See New Railhead Manufacturing, LLC v. Vermeer Manufacturing Company (Fed. Cir. 2002)).
4) Later Patent Issue Date: As provisional patent applications are not examined, the later that one files their non-provisional patent application (not later than 12 months from provisional filing), the later a patent grant may arise due to the delayed non-provisional filing. Accordingly, for Applicants which require an earlier patent issue date for business purposes, it may be advisable to file a non-provisional rather than a provisional.
5) Multiple Filing Fees: In addition to the provisional patent application filing fee, the Applicant will additionally incur a non-provisional patent application filing fee.
6) PCT / Foreign Filing Consideration: Similar to a non-provisional patent application, a PCT or foreign application(s) must be filed within 12 months of the provisional filing date to claim benefit to the provisional. As the PCT process is complex (and requires a blog post of its own), many additional details need to be reviewed and considered (preferably with a licensed patent attorney) if this particular route is chosen.
7) Filing Multiple Provisional Patent Applications: Multiple provisional patent applications, directed toward various advancements of a single invention, may be filed for up to one year from the earliest provisional application filing date as said advancements are realized by the inventor(s). Further, even if multiple provisionals are filed, a non-provisional must be filed within a year from the earliest provisional filing.
However, it should be noted that because each of the subsequently filed provisional applications will in essence describe some new inventive feature or advancement of the invention, various claim recitations of the non-provisional patent application may each possess different priority dates which correspond with the respective provisional that first describes said feature.