Provisional Patent Applications

For many years, there was only one type of patent application. The patent application required a specification or detailed description of the invention; a claim or claims detailing the elements of the invention for which patent protection is being claimed; any necessary drawings; an oath or declaration that the inventor is the original and first inventor of the invention; and the filing fee.

However, In 1994, the an international treaty commonly known as “GATT,” resulted in the formation of the World Trade Organization (WTO) and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), to which the United States became a member and signatory, respectively. Under the TRIPS, WTO members were required to provide strong intellectual property rights and, in the context of patents, allow foreign inventors access to the countries patent protection systems and laws. Under TRIPS, a foreign inventor could establish a priority date in other TRIPS-member country based upon the filing of a patent application in their own country, as long as a regular patent application was filed within the TRIPS-member country within a certain amount of time.

The adoption of TRIPS placed American inventors at a disadvantage with respect to foreign inventors because a United States patent application required that the invention be not only conceived of, but also “reduced to practice,” which means that the invention must be converted from a mere idea to a tangible, working form. In almost every other country, patent applicants could file an initial patent application upon the conception of the invention, thereby providing a priority date at an earlier state in the inventive process, allowing them 12 months to reduce the invention to practice and complete the application. In addition, the 12-month grace period was not included within the period of patent protection. In order to eliminate the disadvantage, United States passed legislation in 1995 to implement TRIPS, amending the U.S. patent statute to allow for “provisional” applications. An ordinary patent application is now referred to as a “non-provisional” application.

A provisional patent application has the same requirements as a non-provisional application, except that the claims and oath or declaration may be omitted. Accordingly, a provisional application can be prepared in less time than a non-provisional patent application and an earlier priority date can be established. In addition, the fee for a provisional application is much lower than the standard application fee. Once a provisional patent application has been filed, the priority date for the application has been set, and the applicant has 12 months to provide a corresponding non-provisional application, which will include the claims and oath omitted from the provisional application along with the other application requirements. The term of patent protection will be measured from the date of the submission of the completed non-provisional application rather than the date of the initial filing of the provisional application. If a corresponding non-provisional application is not submitted within 12 months from the filing of the provisional application, the provisional application will be considered abandoned and cannot result in the issuance of a patent.

Leave a Reply