TAKEAWAY: U.S. provisional patent applications are an optimal option to protect an invention while affording the inventors and/or applicant additional time for further developments and refinements of the disclosed inventive concept(s).
Starting the process to pursue patent protection for a new invention may seem daunting in view of the numerous deadlines, formalities, and important choices to make on where to seek such protection. One question that I hear often from new inventors is “what kind of patent application should I file?” Here are some of the basics on U.S. provisional patent applications for newcomers to the patent scene.
Why choose a U.S. provisional application?
A provisional patent application is an initial, temporary patent filing that lets you secure an early filing date without requiring the formalities of a U.S. non-provisional patent application. The filing of a provisional application starts a 12-month period during which a corresponding non-provisional application must be filed to claim the benefit of the provisional filing date. As an example, among other available options, the non-provisional application may take the form of a U.S. non-provisional application or an International PCT application. Unlike a U.S. non-provisional application, a U.S. provisional application does not require any patent claims, an inventor oath/declaration, or an Information Disclosure Statement (IDS) that serves as a formal prior art submission as it is not examined by the patent office on its merits.
Provisional applications may allow inventors to further develop the disclosed invention(s), test the commercial market, and defer the preparation of a comprehensive non-provisional application for up to 12 months after filing the provisional. The provisional will establish an earlier effective filing date for later-filed claims in the non-provisional and may prevent later filers from obtaining patent rights to the same invention.
The extent of detail included in the provisional application will determine the basis for support of future non-provisional claims.
A provisional application is only as good as the detail it contains at filing. Although supplemental material may be incorporated when converting a provisional to a non-provisional application, only subject matter supported by the provisional application will be afforded the benefit of the provisional application’s filing date. Thus, even though provisional applications may be less formal than non-provisional applications, they must still provide sufficient written description and enablement under 35 U.S.C. § 112 to support later claims.
Thus, including as many details, variations, and related description and/or depictions of the inventive concepts as possible in the provisional application will help support future claims pursued later via non-provisional applications.