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December 2012

The Two-Year Provisional Patent Application

It should be noted that the Patent and Trademark Office (Patent Office) does not really propose extending the term of a Provisional application to two years. A Provisional application is one that does not have to include claims, formal drawings, or for that matter anything but a detailed description of how the invention is made and used. These applications can save the filing priority date for one year, after which a Non-Provisional (Utility Patent Application) must be filed. What the Patent Office does propose is to defer the major expense of filing a complete application for one year. If the Provisional has a complete disclosure of the invention and sketches in place of formal drawings, the Non-Provisional can be nothing more than a copy of the Provisional filing plus at least a few claims.

The Patent Office has realized they should do something to defer costs for individual inventors and small companies beyond the one year provided by a Provisional Application. The Patent Office notes that a large percentage of provisionals never get turned into Utility applications. Among other things, this prevents the Patent Office from using the disclosures in those Provisionals as prior art. Another motivation is that they are receiving political pressure from inventor advocacy groups because many individual inventors cannot afford the cost of having a non-provisional prepared, obtaining formal drawings, and paying the new and higher filing, search and examination fees.

In response to the need to defer the major expense of a non-provisional, they will allow applicants who ask to be included in a pilot program to file an informal application based on the Provisional, and request deferral of the search and examination fees and the requirement for supplying the “Missing Parts” for 12 more months. (Missing Parts normally include formal papers such as the inventor’s Declaration and formal drawings). The Patent Office benefits because the Utility application will be published so it becomes prior art that can be cited against subsequent applications by third parties.

Of course there are risks in filing a Provisional as a basis for a Utility application, because the Provisional may not have sufficient disclosure to “hold” the potential priority of the Provisional’s filing date. Also, there will be unavoidable additional work (such as drafting claims), but those risks and low additional costs and fees may be the only thing that allows an inventor or small company enough time to profit from sales of products embodying the invention so that they can afford those costs of a full set of claims, formal drawings, and the search and examination fees.

One reason Provisionals have their risks is because they are often filed causally, where additional study would reveal that the disclosure doesn’t meet the requirements of a complete Specification, including the requirement that the specification have sufficient information to allow a reasonably skilled person to build the invention without a lot of experimentation. For this reason attorneys may choose to use this procedure only where no publication of the invention has been made by the inventor, and where the final version of the non-provisional application can be filed before the application is published. In those circumstances, the only thing the inventor risks is not being the first inventor to file a complete application (assuming that the non-provisional is judged to be deficient).

Inventors and companies can participate in the pilot program by having their attorneys download a certification form (which also contains warnings of the risk), and filing the application with a form requesting deferral of the additional fees. There is a fee for deferring the major fees but it is only $65.

For the Patent Office’s announcement of the program, please click here.

Intellectual Property



Intellectual Property

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