PROVISIONAL PATENT PROSECUTION

What is A Provisional Patent Application?

A Provisional Patent application lets you file with the U.S. Patent & Trademark Office (USPTO) without a formal patent claim, oath or declaration, or any information disclosure statement, like the prior art, and are not examined. A provisional patent application is a lower-cost, first patent filing in the U.S. that provides the means to establish an early applicable filing date in a later-filed non-provisional patent application. It allows you to apply the term “Patent Pending” when describing the invention. For an overview of the patenting process, view the  Patent Process Life Cycle and see our Sample Patent Invention Disclosure Form.

Benefits of Filing A Provisional Patent

A benefit to a provisional patent is, it provides a way to file with the USPTO that is easier than a non-provisional patent, along with a lower initial investment allowing you twelve (12) months to evaluate the invention's commercial potential before committing to the higher cost of filing and prosecuting a nonprovisional application for patent.

Given provisional patents are valid for only twelve (12) months, you must file a nonprovisional utility patent application before the end of that 12 months from the provisional patent application filing date. If a nonprovisional application is not filed within the twelve (12) months but within fourteen (14) months, it may be allowed by filing a grantable petition to restore the benefit.

What Is Required For A Provisional Patent Application?

There is a minimum of four requirements for a provisional patent Application:

• Cover sheet identifying provisional patent;
• A specification enough to provide for the invention's enablement, written description, and best mode;
• Drawings, if necessary to describe the design; and
• Payment of the filing fee.

Written Description In A Patent

What is a written description of the invention? The written description should be in simple language in which anyone can understand and must include:

• The title of the invention;
• Purpose of the invention;
• Description of drawings;
• Components or steps of the invention;
• How the components or steps interact or how steps are carried out
• How the invention works; and
• May include, but not required:
• Advantages of the invention; and
• Alternative ways for the invention to achieve the same results.

Necessary Patent Drawings In a Patent

What are necessary patent drawings? Necessary patent drawings are drawings that are essential to help others understand your invention and for purposes of clarity. The USPTO recommends six optional formats for illustrations:

• Any view of the invention (top, side, disassembled, exploded, or perspective);
• Labeling numbers (sheet, figure, reference);
• Schematics or flowcharts;
• Dash lines or straight lines;
• Black and white or color photos; and
• Computer-generated or handmade drawings.

An Examining Attorney will review drawings from both the nonprovisional application and the provisional application and compare them to ensure they are similar and about the same invention.

Best Mode for Your Invention In a Patent

What is the best mode for a patent? The best mode describes the inventors' preferred method for building or performing the invention. The best mode is a safeguard against the desire of some people to obtain patent protection without making the full disclosure. Determining best mode requirements are done by two methods:

• At the time of the provisional application filing, did the inventor possess a “best mode” for practicing the invention? While subjective, it focuses on the inventor’s state of mind during the filing; and
• Does the written description of the “best mode” explain, with enough detail, that a person skilled in the art practice it? This requirement is objective because it focuses on the scope of the invention and skill level of the art.