RISKS WHEN FILING PROVISIONAL PATENT APPLICATIONS by ResearchCopyright.com

When you apply for a patent, you are given the choice between a provisional patent and a non-provisional patent. A non-provisional patent is what is generally thought of when someone thinks of a patent. That the patent is filed with the United States Patent and Trademark Office and they have a specific patent number. A provisional patent is more of a temporary patent.

Ever since 1995, inventors have had the option to choose a provisional patent for their invention. This type of patent is a bit cheaper than the non-provisional patent. But, there are several limits to this type of patent.

First, this type of patent filing is allowable without a formal patent claim, oath or declaration, or any other type of information disclosure. Technically, the provisional patent allows the inventor to state an earlier file date if the inventor wishes to later file a full, non-provisional patent application.

An instance when it would be useful to file a provisional patent ahead of a non-provisional one would be to test the item's durability in the marketplace and also to protect against imitators.

The provisional patent is valid for one year following its filing and cannot be extended. This is also the type of patent that allows the words "Patent Pending" to be legally stencilled on the invention in question.

If a non-provisional patent application is not filed within the year following the provisional patent application, the invention loses the ability to have the earlier provisional filing date listed in its record. However, if the non-provisional application is sent during the provisional period, and makes reference to the original provisional application, the provisional patent term endpoint may be extended by a maximum of 12 months, at which point the patent term will take effect, as long as a patent is awarded. Of course, with the earlier filing date the provisional patent application affords, the patent term will extend from that earlier date, not the date of the non-provisional application.

To file the provisional patent application, the application must be made in the name of all of the inventors. This application can be filed up to a year after the work is offered for sale, public use, or publication. If more than a year passes between the filing of a provisional patent application and the filing of a non-provisional patent application, the application is declared to be abandoned.

The filing date will be accorded to the provisional application when it contains a written description of the invention and any drawings needed to understand what the invention does. These two items must comply with all standard requirements. The application must also contain the filing fee, as well as a cover sheet identifying the application as a provisional patent application, the names of the inventors, the residence of the inventors, the title of the invention, the name and registration number of the patent attorney or agent and docket number (if you used either of those), the address to send correspondence, and any agency of the US Government that has any interest in the invention.

Provisional patent applications cannot be filed for design inventions. Provisional patent applications are not examined on their merits, nor can they claim the benefit of a previously filed application. The application must be as complete as possible, lest it be rejected.

For inventions with multiple inventors, all of them must be named in the application, and all must have made some kind of contribution to the creation of the invention to be patented. When the non-provisional application is filed, the list of inventors must have at least one name in common with the provisional application.

Fees for provisional and non-provisional applications change every year, check the USPTO website to find the current fees. Checks and money orders must be payable to "Director of the US Patent and Trademark Office."

The provisional patent application may be filed on the USPTO website using the EFS-Web system authorized by the USPTO. The application may also be mailed to the USPTO by using the following address:

Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450