One Minute Newsflash – United States Provisional Patent Applications

Written by: Kirsten M. Oates

The United States Patent and Trademark Office (USPTO) offers inventors the option of filing a United States Provisional Application (USPPA) which provides a convenient inexpensive way for inventors to establish a United States filing date for their invention and to delay filing a nonprovisional patent application for 1 year.  The USPPA has reduced formality requirements (i.e., no formal patent claim, oath or declaration, or prior art statement), is not examined for its merits or published by the USPTO, and authorizes the use of the “patent pending” term, thereby enabling commercial promotion of the invention.

However, the following should be noted:

1)         Requirements for the USPPA include a cover sheet providing inventorship information with all named inventor(s) having contributed to the invention; a written description of the invention; drawings if appropriate; and a filing fee.  However, the description of the invention should be as complete as possible since the claimed subject matter in the nonprovisional application must have support in the USPPA.  A USPPA is often filed in a rush, leaving out significant details of the invention.

2)         A USPPA cannot claim priority to a previously filed application and cannot be filed for industrial designs.

3)         After filing, amendments are not permitted in a USPPA.

4)         A USPPA will not itself mature into a granted patent.

5)         The 1-year pendency period of a USPPA cannot be extended.  To claim benefit from the earlier filing date of a USPPA, the nonprovisional application must be filed during the 1-year pendency period of the USPPA and must have at least one inventor in common with the inventor(s) named in the USPPA.

6)         While a USPPA is inexpensive, there are additional future costs for the full nonprovisional patent application.  An applicant thus may end up paying more in total for two patent applications.

Contact any of the highly experienced patent lawyers and agents at Parlee McLaws LLP for further information should a USPPA be of interest to you!