Provisional patent applications serve an important role in preserving an inventor’s rights to an invention. Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patents, which was designed to provide a lower-cost first patent filing in the United States and to give applicants parity with foreign applicants under the GATT Uruguay Round Agreements.
A provisional patent application is a U.S. national application filed in the USPTO under 35 U.S.C. §111(b). A provisional application is not required to have a formal patent claim or an oath or declaration. Provisional applications also should not include any information disclosure (prior art) statement since provisional applications are not examined. A provisional application provides the means to establish an early effective filing date in a later filed nonprovisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied in connection with the description of the invention.
A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding utility nonprovisional application for patent (nonprovisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. However, a nonprovisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition (including a statement that the delay in filing the nonprovisional application was unintentional and the required petition fee) to restore the benefit under 37 CFR 1.78.
In accordance with 35 U.S.C. §119(e), the corresponding nonprovisional application must contain or be amended to contain a specific reference to the provisional application. For nonprovisional applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet. Further, a claim under 35 U.S.C. §119(e) for the benefit of a prior provisional application must be filed during the pendency of the nonprovisional application, and within four months of the nonprovisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78.
Once a provisional application is filed, an alternative to filing a corresponding nonprovisional application is to convert the provisional application to a nonprovisional application by filing a grantable petition under 37 C.F.R. 1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.
Converting a provisional application into a nonprovisional application (versus filing a nonprovisional application claiming the benefit of the provisional application) will have a negative impact on the patent term. The term of a patent issuing from a nonprovisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. By filing a provisional application first, and then filing a corresponding nonprovisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.