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Provisional Patent FAQ's

What is a provisional application for a patent?

A provisional application of patent permits an early effective filing date in a patent application and allows having the “Patent Pending” status assigned to the concerned invention for a period of one year. Provisional Application of Patents introduced by USPTO on June 8, 1995, gives the benefit of low cost first patent filing to the inventors along with the benefit of parity to the U.S. applicants verses their foreign counterparts. A provisional application cannot be filed for design patents. Very importantly, a provisional application will not mature into a granted patent without further submissions by the inventor, within the granted ‘pendency’ period of one year.

How is applying for a provisional application for patent different from making a non-provisional application?

You do not need claims and oath or declaration for a provisional application.

How is the filing date of a provisional application for patent determined?

The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor(s) are received in the USPTO.

When to apply for a provisional application for patent?

It can be filed by or within the first year of the date of first sale, offer for sale, public use, or publication of the invention.

How soon should the non - provisional application for a patent be made after the submission of a provisional application?

The applicant can file for a non-provisional application for patent on the concerned invention within 12 months. Importantly, provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date.

Will the period of provisional patent status be counted towards the term of the non-provisional patent to be granted later?

No. The 12-month provisional application period is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application, which would rely on the filing date of the provisional application.

What are the major advantages of Provisional Application for Patent?

• Provides low cost filing with one full year to assess the invention’s commercial potential.
• Establishes a patent application filing date for the invention
• Permits the use "Patent Pending" notice for one year
• Enables immediate commercial promotion of the invention with greater security against having the invention stolen
• Preserves application in confidence without publication.
What are the major disadvantages of Provisional Application for Patent?
• Provisional applications are not examined on their merits.
• Provisional applications are valid for only one year and if the non-provisional application is not filed within this period, the benefits of provisional applications would no longer be available.
• Provisional applications for patent cannot be filed for design inventions.
• No information disclosure statement may be filed in a provisional application.
• Amendments are not normally possible after filing.
What are the things to keep in mind while making the provisional application for patent?
• A provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.
• Provisional applications are valid for only one year and if the non-provisional application is not filed within this period, the benefits of provisional applications would no longer be available.
• Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic.
• The description of the invention in the provisional application should be as complete as possible with the manner and process of making and using the invention explained in full, clear, concise and exact terms.
• If there are multiple inventors, each inventor must be named in the application, provided each of the inventors have made a contribution individually or jointly to the subject matter disclosed in the application.
• Provisional applications for patent may not be filed for design inventions.
• Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
• No information disclosure statement may be filed in a provisional application.
• The claimed subject matter in the non-provisional application that would be filed later must have support in the provisional application.
• The non-provisional application must have one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
• There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
• A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of the provisional application filing date:

1. A corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or

2. A grantable petition under section 37 CFR 1.53(c) (3) to convert the provisional application into a non-provisional application is filed.

Can I secure the patent without filing a corresponding non - provisional application for patent, to the earlier provisional application?

Yes. You can convert the provisional application to a non-provisional application by filing a grantable petition under 37 CFR §1.53(c) (3) requesting such a conversion within 12 months of the provisional application filing date. However, this will have a negative impact on patent term as compared to filing a corresponding non-provisional application claiming the benefit of the provisional application. The term of a resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application.