A provisional patent application is a temporary form of a United States patent application that establishes a filing date but does not mature into a regular utility patent application.
A provisional application must be replaced with a regular patent application claiming priority to the provisional application within one year of the initial filing date.
Unlike regularly utility applications, provisional applications are not examined and do not require an oath or declaration, or an information disclosure statement.
US provisional patent applications can be a useful strategic tool when seeking protection for a new invention.
A provisional patent application establishes a filing date and acts as a placeholder for the subsequent filing of a regular utility patent application. Note that provisional patent applications exist only in the US, not Canada.
Inventors may be surprised to learn that provisional patent applications are subject to the same statutory requirements as a regular patent application. Specifically, in order to support the claims in a US regular utility patent application claiming priority to a provisional application, the specification of the provisional application must have provided the following:
A common scenario involves the filing of a provisional patent application shortly before a public disclosure of the invention is to be made.
However, if the provisional application does not adequately support the claims of the regular utility application filed one year later, the inadequate disclosure can result in the forfeit of patent rights outside of Canada and the United States.
Since Canada and the United States have a one-year grace period with regard to public disclosures, it is still possible to obtain protection in these jurisdictions after having publicly disclosed an invention.
In contrast, in most other jurisdictions, the disclosure of the invention after the inadequate disclosure in the provisional application could result in some, if not all, claims being invalidated.
To make matters worse, the applicant may not be aware of the forfeiture, and a foreign patent examiner may not examine the provisional application to ascertain the quality and sufficiency of the initial disclosure.
The result may be that the claims of the patent are invalidated at a much later stage during litigation, long after the applicant has paid tens of thousands of dollars developing a broad foreign portfolio based on the initial provisional application.
For the reasons outlined above, it is highly recommended that inventors seek a qualified patent agent to draft a complete patent application when filing a provisional patent application.
This ensures that the original specification properly supports the claims that will eventually form the basis of the regular application.
Occasionally, there may simply not be enough time to draft a complete application before a public disclosure is made. In such cases, it is usually best to employ a common sense approach and file the most complete application possible given the time constraint, following up shortly afterward with a complete filing.
When properly executed, filing an initial provisional patent application can yield many benefits.
By preparing a provisional application as a complete application that fully supports the claimed invention, inventors can enjoy the advantages of filing a provisional application while mitigating the risks involved.
Written by Stephen W. Leonard, Ph.D., registered Canadian and US Patent Agent at Hill and Schumacher, firstname.lastname@example.org