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).