The Provisional Application for Patent



by Michael Goltry, Registered Patent Attorney (480-991-3537; mg@pgpct.com)

Since 1995, the United States Patent & Trademark Office (“Office”) has offered inventors the
option of filing a provisional application for patent which was designed to provide a lower cost
first patent filing in the United States. A provisional application provides the means to establish
an early effective filing date in a patent application and permits the term “Patent Pending” to be
applied in connection with the invention. The provisional application enables immediate
commercial promotion of the invention with greater security against having the invention stolen
and provides one full year to assess the invention’s commercial potential before committing to
the higher cost of filing and prosecuting a non-provisional application for patent.

A provisional application is a means for inventors to relatively easily, quickly and inexpensively
obtain “patent pending” status and establish a priority date in the Office.

The term of a provisional application is one year. Prior to the first anniversary date of the filing,
a non-provisional application for patent claiming priority to the prior-filed provisional
application must be filed or the priority date is lost. During this time, the inventor can investigate
the commercial feasibility of the invention to determine if the cost of preparing and filing a
regular patent application is justifiable. During the one-year term of the provisional application,
the inventor may make modifications, variations and alternates to the original invention. This can
be included when preparing the utility application. Also, it is noted that a provisional application
is held in confidence by the Office.

Prior to beginning the preparation of a provisional application for patent, think of ways in which
another might rip off or design around the present embodiment of the invention and then include
these modifications into the application as alternate embodiments. This broadens the scope of
protection of the patent and serves as a prior art reference to bar another attempting to obtain a
patent on an invention that is similar. The alternate embodiments do not have to be ones that the
inventor intends to produce or sell.

To obtain the earliest possible filing date, a provisional application for patent can often be filed
immediately off the drawing board model. During the ensuing research and development phase,
complete and comprehensive records should be maintained. This material can be included in the
on-provisional application. After the non-provisional application is filed, the inventor should
continue to keep good record of any modifications. Any modifications should then be brought to
the attention of the patent practitioner representing the inventor for possible inclusion into the
previously-filed non-provisional application, which may necessitate filing a continuation-in-part
application.

A priority date in the Office can be claimed only for that which is illustrated and described in the
provisional application. Therefore, attention to detail is important.

The provisional application must be made in the name of the inventor, or each joint inventor. It
can be filed up to one year following the date of first sale, offer for sale, public use, or
publication of the invention.

A filing date will be accorded to a provisional application only when it contains:
● a written description of the invention, and
● any drawings necessary to understand the invention.

Title of the Invention
The title is part of the written description. The title of the invention should be brief, preferably
from two to seven words, technically accurate and descriptive, and be placed at the top of the
first page of the specification.

The title of the invention serves only one purpose. Within the Office are thousands of patent
examiners divided into hundreds of examining groups. Each group examines patent applications
within a designated category. When the application is received by the Office, it must determine
to which group the application should be assigned. Therefore, the title of the application should
be as generic as possible to correlate with an examining group classification.

Written Description
The written description of the invention in combination with the drawings is referred to as the
specification. Pursuant to 35 U.S.C. § 112(a), “[t]he specification shall include 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 pertains, or
with which it is most nearly connected, to make and use the same, and shall set forth the best
mode contemplated by the inventor or joint inventor of carrying out the invention.”

Drawings
Pursuant to 35 U.S.C. § 113, “[t]he applicant shall furnish a drawing where necessary for the
understanding of the subject matter sought to be patented.”

Claims
A claim is not required in a provisional application under 35 U.S.C. § 111(b)(2).


Client Approved

“”

"Our company has worked with a number of patent attorneys and were so pleased when we began working with Parsons & Goltry nearly a decade ago. Mike Goltry's knowledge and attention to detail has enabled us to have numerous products patented and trademarks registered. We highly recommend this Law Firm."

- Sharon K.

“”

"Michael Goltry is the most professional, honest and effective patent attorney whom I ever met in my 40 year professional engineering career. I started to work with him over 20 years ago and plan to work indefinitely."

- Zoltan Kemeny, PhD, Struct. Eng.

“”

"Mr. Goltry took a provisional patent that we'd filed ourselves, and quickly and professionally turned our innovation into U.S. and foreign applications. His [patent claims] were a thing of beauty, and I was amazed by how deftly he countered the inevitable office actions. His language held up, and the U.S. Patent just issued. He was easy and efficient to work with, and his fees were remarkably reasonable. We're not planning to go anywhere else, ever."

- Ski Milburn, CEO, Victori, LLC

“”

"I applied for a patent through Parsons & Goltry. After being on the docket for 2 years at the USPTO, I received notification that my patent request had been denied. Michael Goltry contacted me immediately to review my options. After I informed him of my decision to move forward, he filed a response to the USPTO. In his response he got the examiner to fully understand the claims in the patent application and the "denied" decision was reversed. I was able to secure and receive a "patent granted" decision. Thank you, Michael Goltry."

- Kathy H., Inventor

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