Provisional Patent

Introduction

Great ideas happen every day. But the idea, invention, or process isn't always credited to the person who came up with it first. Sometimes, someone overhears an idea. Sometimes you're so excited, you'll tell anyone who will listen about it. And sometimes, believe it or not, someone else will come up with the same invention at just about the same time. 

A Provisional Patent Application establishes your priority with a "date of invention." In other words, it tells the world "This is my invention." The reason it's so important to file a Provisional Patent Application is because in Patent Law, it's often not the person who came up with the idea first who wins – it's the person who takes action and files the patent application first. 

The advantage of a provisional patent is that it's much faster and easier to file than a standard patent application. A standard patent application can take months to prepare, and it can cost $5,000 or more. With a provisional patent, you will have 12 months to file a full patent application, and you can legally announce to the world: "patent pending." 

Furthermore, you can tell people about the idea, seek funding to develop the invention, even begin selling the invention, with confidence that your invention is protected. This way, you can assess the invention's complete potential before spending significant sums of money on the full patent, not to mention money on marketing and distribution. 

Certified Document Solutions’ Provisional Patent information provides you with the resources you need to understand the functions and advantages of a provisional patent. If you decide to apply for a provisional patent, all you do is answer a few questions, and we take care of the rest.

 

What is a Provisional Patent?

A provisional patent was designed to solve an age-old problem. You want to see if your invention has commercial appeal, but if you tell people, you run the risk they will “steal” the idea. Non-disclosure agreements can help, but not everyone is willing to sign one. 

Before 1995, inventors could either build the invention themselves, or they could file a full patent application before telling anyone about their invention. However, there were significant problems with both approaches. First, it’s time-consuming and expensive to build a working prototype, especially one based on new technologies. Second, hiring an attorney to prepare a full patent application can cost thousands of dollars. 

The solution was the Provisional Patent Application. According to the U.S. Patent Office, a provisional patent is designed to provide a “lower-cost first patent filing in the United States.” A provisional patent lets you quickly secure an initial filing date for your invention and legally allows you to use the words “patent pending.” These words serve as a strong warning that anyone who copies your invention risks patent infringement. 

Once a provisional patent application is filed, you have 12 months to test your idea and seek funding before filing a full patent application. If you choose to file the full patent before the end of the 12-month period, the filing date can “relate back” to the date you filed your provisional patent application. In other words, if you filed your provisional patent application on January 1, 2004 and then file your full patent application on December 31, 2004, the full patent will be deemed to have been filed on January 1st. 

If you decide not to move forward with your patent, then you can simply abandon it, knowing your upfront costs were minimal.

 

Benefits of Provisional Patents

There are several advantages of filing a provisional patent application:

1.     Lower cost and faster preliminary process

The provisional patent filing fee is much less expensive than a full patent fee. In addition, the technical requirements are simplified, which means it takes much less time and money to prepare and file a provisional patent application.

2.     Establishes an official U.S. patent filing date

Full patent applications filed within twelve months of the provisional application date have the benefit of “relating back” to the provisional patent application. This means that should a dispute arise over invention ownership, the U.S. Patent Office will accept the provisional patent’s earlier filing date as the date of filing. 

A provisional patent filing can be extremely useful in a race to patent an invention in a highly competitive field. Although it is possible to demonstrate your invention’s conception and reduction to practice by other means (e.g. prototypes built and tested, journals, notes, etc.), a provisional patent is one of the best and most reliable forms of proof.

3.     One year to assess the commercial viability of your invention

You can take advantage of the provisional patent’s one-year pendency period to evaluate the commercial potential of your invention before committing to the upfront costs of obtaining a full patent. If you decide to make modifications to your invention during the one-year period, you can file a new provisional patent application and then consolidate both provisional patents into one “regular” patent.

4.     Use of the “patent pending” notice

Prior to the advent of the provisional patent application, an inventor had to file a full patent application in order to use the label “Patent Pending” or “Patent Applied For.” You may now do so upon filing a provisional patent application. This label is often useful in deterring potential theft.

5.     Extending the patent term

A patent lasts for 20 years, measured from the date that a full patent application is filed. By first filing a provisional patent that lasts for 12 months, you could conceivably extend your patent rights by a full year.

6.     Confidentiality

A provisional patent preserves the confidentiality of your application without publication.

7.     Immediate approval

Because a provisional patent application is not reviewed by a U.S. Patent Office examiner, you avoid spending time and/or attorney fees communicating with the examiner and redrafting claims during the regular patent process.

 

What Can be Patented?

Under U.S. Patent law, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” In general, what this means is that to qualify for a patent, you must satisfy the following four requirements:

1.     The subject matter must be patentable.

2.     The invention must be novel.

3.     The invention must have some utility or usefulness.

4.     The invention must not be obvious.

1. Patentable subject matter 

A patent does not cover a mere idea. Instead, the idea must be embodied in one or more of the following:

a.     A process or method (such as a new way to manufacture concrete)

b.     A machine (something with moving parts or circuitry)

c.     A manufactured article (such as a tool or another object that accomplishes a result with no moving parts, such as a pencil)

d.     A new composition (such as a new pharmaceutical)

Even if the invention falls into one of the four above categories, there are certain subject matters that just cannot be patented. These include mathematical formulas, naturally-occurring substances, laws of nature and processes done entirely with the human body (such as a technique for shooting a free throw in basketball). 

2. Novelty

Novelty simply means the invention must be new. That is, it must differ from knowledge already existing in the public domain (referred to as “prior art”). Patent law defines prior art in several ways, including:

  • Anything that is described in a publication: 1) before the date you made the invention, or 2) one year before you file your patent application.
  • Anything that is in public use or on sale in the U.S.: 1) before the date you made the invention, or 2) one year before you file the patent application.
  • Prior patents that were issued: 1) before the date you made the invention, or 2) one year before you file the patent application.

 

Please be aware that if you’re not careful, even the original inventor could be barred from filing a patent application! The reason is the one-year rule applies to everyone, including the original inventor. For example, if you publish your invention in a magazine or begin selling it, you must file a patent application within one year from the date it was published or first sold. Otherwise, no one (not even the inventor) will be able to obtain a patent for the invention. 

Because a provisional patent application is not published, it preserves the confidentiality of the invention and does not start the one-year rule by itself. For example, although you would not get the benefit of the earlier filing date, there is no restriction against filing a full patent application two years after filing the provisional application (assuming the invention has not been disclosed in a publication and has not been sold). 

3. Utility 

Utility means an invention must physically accomplish something. If an invention works, or if it produces a result – even in theory -- then it has utility. In practice, very few inventions fail the utility test. Only where the logic underlying the assertion is seriously flawed (for example, a perpetual motion machine) could a patent be challenged on utility. In addition, illegal or highly dangerous products may also be rejected by the U.S. Patent Office under this requirement. 

Please be aware that design patents do not need to satisfy the utility requirement. 

4. Non-obviousness

Non-obviousness means that people who are skilled in the field of the invention (as opposed to the average person) would not consider the invention obvious, given the information already available in the public realm. For example, an invention made by simply substituting one color for another, or by combining two existing inventions in a logical and obvious manner, would ordinarily not be patentable.

 

Patent Searches

Typically, a search of the prior art is conducted to determine whether an invention meets the novelty and non-obviousness requirements for patentability. You can search for prior art online or at a patent depository library. However, a good search generally takes considerable time to complete, unless you choose to hire an attorney or someone who specializes in patent searches. 

Because provisional patents are not examined for patentability by the U.S. Patent Office, you can decide to secure a filing date with a provisional patent application and then use the ensuing one-year period of pendency to conduct a more thorough search. 

When drafting a regular patent application, a good patent attorney or patent agent will emphasize the differences between your invention and the prior art. In addition, he or she will describe the history of inventions in related fields and explain why your invention would not be the next logical step in the evolution of the existing products (i.e., non-obvious). 

In addition, recall that patents are not limited to completely new inventions; they can also cover significant improvements to existing inventions. For example, contrary to popular belief, Thomas Edison did not actually invent the light bulb. Instead, he improved upon a 50-year-old idea.

 

Patent Priority

Under U.S patent law, the "first-to-invent" gets the patent rights. However, this only applies if you can prove you were the first person to come up with the idea. 

Some people believe that mailing yourself a letter with your invention notes can prove your conception date for the Patent Office. That is not true. Instead, you should keep a detailed and diligent log book which describes the activities you took to create and test the invention. Each entry should be signed, dated and witnessed by others. In addition, each participant and his or her role should be noted. 

Even with a log book, it is often difficult to prove you came up with an invention before someone else. That’s why the first person to file a patent application is almost always deemed to be the first to invent, and why provisional patents have become so popular – because they establish an official U.S. Patent filing date for the date that the invention was first “reduced to practice.” 

Back in 1876, two people independently came up with an invention that could carry speech electronically over a wire – the telephone. Both men rushed their designs to the patent office, with Alexander Graham Bell beating the other man by only two hours. After a long and protracted fight, Bell eventually won and was awarded the patent for the telephone, which eventually became known as “the most valuable patent.” Do you know the name of the person who came in second?

 

Filing Requirements

Filing a provisional patent application requires fewer technical specifications than a full patent application. The main three elements of a provisional patent application are:

1.     A written description of the invention

2.     Any necessary drawings

3.     The U.S. Patent Office filing fee

Unlike a full patent application, a provisional patent application does not need a detailed discussion of the prior art, the objectives and advantages of the invention, and alternative embodiments of the invention. In addition, a provisional patent application does not require the inclusion of any claims. Drafting claims is often the most difficult part of completing a full patent application because the precise wording of claims determines the invention's scope of protection. 

Description of the Invention 

In a provisional patent application, the description may be written generally and in layman terms (unless more technical terminology is required to understand the invention). Although the written description can be informal, the U.S. Patent Office requires that it adequately describe the full scope of the subject matter you wish to claim as your invention. It must also be written in full, clear and concise terms so that any person skilled in the art or field of the invention could make and use your invention. 

This section must also include a brief description of each illustration included with your application. In addition, somewhere in the description, you must state the best mode contemplated for carrying out the invention. In many cases, an inventor may have already written a narrative that includes most or all of this information in the course of researching and developing the invention. 

Typical elements of a provisional patent application's written description include the following:

1.     Title of the invention

2.     Purposes of the invention

3.     Description of drawings

4.     Components or steps of the invention

5.     How these components interact or how the steps are carried out

6.     How one uses the invention to cause it to work

7.     Best mode of the invention

As an option, a provisional patent’s written description could include the following two elements:

1.     Advantages of the invention

2.     Alternative ways for the invention to achieve its results

Inventors

Any patent application, including a provisional patent, must be filed in the name of all the inventor(s) involved, even if the invention belongs to someone else. Note that at least one inventor must be shared in common between a provisional application and a full patent application in order for the latter application to relate back to the earlier filing date. 

Any person whose contribution is used in any way in the invention is considered to be a co-inventor. For example, a person who added the springing device onto the stapler would be considered a co-inventor of the stapler. 

Drawing(s) of the Invention 

The reason for requiring drawings in a provisional patent application is the same as that for a full patent application: to help others understand your invention. In rare cases, a written description alone will suffice, but the U.S. Patent Office strongly recommends including illustrations of your invention for purposes of clarity. As we will discuss later, this is especially important if you plan to later file for a full patent. At that time, a U.S. Patent Officer will closely examine the subject matter contained in the provisional patent application (including any drawings) to see if it adequately corresponds to the subject matter of the full patent application. 

The U.S. Patent Office suggests the following six optional formats for illustrations that accompany a provisional patent application:

1.     any view (e.g. top, side, disassembled, exploded, perspective)

2.     labeling numbers (e.g. sheet, figure, reference)

3.     schematics or flowcharts

4.     dashed lines or straight lines

5.     black and white or color photographs

6.     computer-generated or handmade drawings

 

Turning Your Provisional Patent into a Full Patent 

Once your provisional patent application is filed with the U.S Patent Office, you have exactly twelve months to apply for a full patent in order to claim the earlier filing date as the date of invention. This can be done in two ways:

 

1.     Filing a full patent application that claims the provisional patent’s filing date.

 

2.     Filing a petition to convert the provisional patent into a full patent application.

 

Although both of these actions result in a full patent application, the term of the patent will differ. With the first option, your patent term will be measured from the date that your full patent filed. With the second option, the term will be measured from the filing date of the provisional patent. Thus, with the first option, you are effectively able to add up to an extra year to your patent term. 

In order for the full patent application to have the benefit of the provisional patent’s filing date, the description of the invention in the provisional patent application must be similar in sufficient detail to the invention as described in the full patent application. In other words, the U.S. Patent Office must be able to confirm that the invention described in your provisional patent application is the same as the invention covered in your full patent application. 

Therefore, it is important to be as thorough as possible when disclosing your invention in the provisional patent application. For this reason, the U.S. Patent Office highly recommends that you include professional illustrations of your invention with your provisional patent application. 

In addition, since a provisional patent application is not reviewed by the U.S. Patent Office, the filing of a provisional patent does not guarantee that you will actually be awarded a full patent. Instead, the full patent application is evaluated on its own merit. Only if the full patent application is approved will the provisional patent’s filing date be used as the priority date of the patent.

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