Provisional Patent
FEATURES
  • Provides simplified filing with a lower initial investment with 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
  • Establishes an official United States patent application filing date for the invention
  • Permits one year's authorization to use "Patent Pending" notice in connection with the invention
  • Begins the Paris Convention priority year
  • Enables immediate commercial promotion of the invention with greater security against having the invention stolen
  • Provides the same confidentiality, access, and certified copies by PTO as non-provisional applications for patent
  • Allows for the filing of multiple provisional applications for patent and for consolidating them in a single non-provisional application for patent
  • Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition)
BACKGROUND

Since June 8, 1995, the U.S. Patent and Trademark Office (PTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost, first patent filing and equivalence with foreign applicants under the GATT Uruguay Round Agreements.

A provisional application for patent allows filing without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides the means to establish an early effective filing date in a patent application and allows the term "Patent Pending" to be applied.

It is recommended that applicants consult with a registered patent attorney or agent, if possible. A list of patent attorneys and agents, listed alphabetically by geographic region, can be obtained from the U.S. Government Printing Office at the following address:

Superintendent of Documents
P.O. Box 371954
Pittsburgh, PA 15250-7954

PROVISIONAL APPLICATION FOR PATENT FILING DATE REQUIREMENT

The provisional application for patent must be made in the name(s) of all of the inventor(s). It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (Note: These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)

A filing date will be accorded to a provisional application for patent only when it contains:

  • a written description of the invention, complying with all requirements
  • any drawings necessary to understand the invention
  • the names of all inventors.

If any of these three items are missing or incomplete, no filing date will be granted. To be complete, a provisional application for patent must also include:

  • the filing fee
  • a cover sheet identifying the application as a provisional application for patent.

The cover sheet is required so as to distinguish the provisional application for patent from other applications and documents filed in the PTO. The cover sheet provides all of the information needed to process the provisional application promptly and properly and prepare the filing receipt. A sample cover sheet is available from the PTO. Use of the PTO's cover sheet is not mandatory, however, as the cover sheet requirements pertain to content, not format.

The cover sheet must identify:

  • application as a provisional application for patent;
  • inventor name(s);
  • inventor residence(s);
  • title of the invention;
  • name and registration number of attorney or agent and docket number (if applicable);
  • correspondence address; and
  • any U.S. Government agency that has a property interest in the application.
CAUTIONS
  • Provisional applications for patent are not examined on their merits.
  • The benefits of the provisional application for patent cannot be claimed if the one year deadline for filing a non-provisional application for patent is missed.
  • If the one year deadline for filing falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the non-provisional application must be filed prior to the Saturday, Sunday, or Federal holiday in order to be copending with the provisional application.
  • Provisional applications for patent cannot claim the benefit of a previously filed application, either foreign or domestic.
  • It is recommended that the disclosure of the invention in the provisional application for patent be as complete as possible. In order to obtain the benefit of the filing date of a provisional application for patent the claimed subject matter in the later filed non-provisional application must have support in the provisional application for patent.
  • If there are multiple inventors, each inventor must be named in the application for patent.
  • The inventor(s) named in the provisional application for patent must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the application.
  • The non-provisional application for patent must have one inventor in common with the inventor(s) named in the provisional application for patent to claim benefit of the provisional application filing date.
  • A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim the benefit of that provisional application.
  • There is a surcharge for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application for patent.
  • Provisional applications for patent may not be filed for design inventions.
  • Amendments are not permitted in provisional applications for patent after filing, other than those to make the provisional application comply with applicable regulations.
  • Filing of an information disclosure statement in a provisional application for patent is prohibited.
FEE

The most current fees for provisional and non-provisional applications for patent, processing fees, etc. can be found on the United States Patent and Trademark Office's fee page. Payment in the form of a check or money order must be made payable to "Commissioner of Patents and Trademarks." Mail the provisional application and filing fee to:

Box Provisional Patent Application
Assistant Commissioner for Patents
Washington, DC 20231

WARNING
  • NON-Provisional APPLICATION FOR PATENT must be filed within 12 months of the Provisional APPLICATION FOR PATENT Filing Date to claim the benefit of the PROVISIONAL APPLICATION FILING date.
  • If the inventor takes no further action, the application will automatically be abandoned 12 months after the provisional application for patent's filing date by operation of law or upon failure to correct informalities (e.g., pay filing fee or correct cover sheet error).
CONTACTS

Direct questions regarding regulations or procedures to the Office of the Deputy Assistant Commissioner for Patents Policy and Projects.

Telephone: (703) 305-9285; Fax: (703) 308-6916

Direct questions regarding legislative changes to the Office of Legislative and International Affairs.

Telephone: (703) 305-9300; Fax (703) 305-8885

For additional information, call the PTO General Information Services Division at 800-786-9199 or (703) 308-4357.

 

  

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