Provisional Patent Applications & Their Legal Impact
In general, once an invention is shared publicly, the one-year grace period within which you must file your patent application starts to tick. For many inventors, this narrow window prompts them to file a patent application in order to alert others that they have a patent pending. However, applying for a patent can be a misstep because obtaining a patent is expensive, the design of your invention may still be evolving and improving, and you may not fully understand the market for your product yet.
There are two types of patent applications: provisional and non-provisional. The non-provisional patent application is the one that most people need to use. Provisional patent applications were created to put U.S. inventors on equal footing with foreign inventors. Foreign inventors sometimes file their patents with their home country first and then file with the United States Patent and Trademark Office (USPTO), giving priority to their home country. This means that they get an extra year of patent protection. Filing a provisional patent application gives a U.S. inventor 12 extra months during which he or she can claim a patent is pending.
A provisional patent application does not give you a provisional patent. Instead, it stops the clock with regard to statutory bars, and you get a placeholder that allows you to lay claim to the initial filing date for purposes of showing your priority date for a patent. It also means you can write “patent pending” on a prototype and show it to others without losing your patent rights. You get a year from the date a provisional patent application is granted to develop your product and get more market information to determine whether it is worth getting a non-provisional patent.
How to File for a Provisional Patent Application
A provisional patent application must meet the requirements of 35 U.S.C. § 112 by including an accurate written description of both the components and the operation of the invention. Your application should also include any drawings that are needed to understand the invention.
Both the specification and the drawings must be broad and meet all the patentability requirements of a patent. The description should avoid language that limits the scope of the protection too much, and while the description should be accurate, it should also be broad. Words that tend to limit the scope include “necessary” and “essential.”
However, the description should also have a high level of detail that would allow somebody familiar with the art from which the patent arises to make and use the invention. This is because anything omitted from your provisional patent application is not considered a part of the invention. You want to make sure that when you start making money from your invention, your competitor cannot compete too closely or directly with your invention.
If the specification or drawings are not complete, the provisional patent application will not be useful or it may be rejected. However, a provisional patent can be filed without any prior art statement, oath, or informational disclosure. The provisional patent application may later be connected to your non-provisional patent.
With the application, you should also include a filing fee and the cover sheet provided by the USPTO, which includes the names of all inventors, their residences, the title of the invention, the name and registration of the attorney or agent (if you have one), a docket number, any federal government agency with a property interest in the application, and a correspondence address.
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