FAQ on Provisional Patent Application

FAQ on Provisional Patent Application

Are you looking to safeguard your invention? The best way to protect and have rights over it legally would be by filing a provisional patent. It is one of the tedious legal processes where you will come across lots of procedures. Here are some common FAQs you can have to find the best and easy process. 

What is a provisional patent application?

The provisional patent application (“provisional application”) is a document filed with the United States Patent and Trademark Office (USPTO) that establishes an invention’s “priority date,” i.e., proving that the inventor had adequate possession of the invention described in the provisional application as of the filing date of the provisional application. It is important for a provisional application to describe the invention in sufficient detail that someone with ordinary skill in the art can make and use it without undue experimentation in order for it to be effective. Applicants are responsible for ensuring their provisional applications adequately describe their invention since they do not get examined by the USPTO. Provisional applications may not suffice to establish a priority date for patent claims directed to the invention that eventually are filed and examined in the US and/or abroad if the invention is not described thoroughly enough.

Why should I consider filing a provisional application?

A provisional application allows potential world-wide patent rights covering an invention to be established expediently and relatively inexpensively without affecting their term.

When should I consider filing a provisional application?

The invention should be disclosed before any public disclosure (such as a conference presentation, poster presentation, department seminar, paper publication, or public announcement);

Before a meeting with sponsors, collaborators, competitors, and/or investors; and/or

After the inventors have brought their invention into practice (or have a good plan for doing so), they plan to continue working on it over the next year.

What should a provisional patent application include?

There are a number of different types of materials that can be included in a provisional application (e.g., text, figures, graphs, charts, photographs, and/or drawings) as long as they describe the invention and how it is made and used. A provisional application should explicitly answer the following questions:

What is the invention?

How is the invention made?

How is the invention used?

According to US patent law, provisional applications must answer these questions comprehensively in order to determine a priority date. Nonprovisional U.S. applications are also subject to these legal requirements, called the “written description” and “enablement” requirements.

Tip: Request all materials that describe or support the inventor’s work. For example, theses, manuscripts, journal papers that contain “Supplementary Materials,” computer code (preferably with comments), laboratory notebooks, emails, invention disclosure forms, and presentations may be used.

TIP: Confirm that the invention being disclosed is actually new.

Should a provisional application include patent “claims”?

It is legally defined that a patent claim defines the invention for which a patent applicant has enforceable rights (for example, the right to prevent others from making, using, or selling the invention). USPTO examines nonprovisional applications for utility, novelty, nonobviousness, as well as compliance with the written description and enablement requirements, and grants claims.

However, including claims in a provisional application can provide several advantages, even though provisional applications are not examined. It is possible to receive a priority date earlier for the later-filed nonprovisional application and the claims that will be examined in the nonprovisional application by including claims in the provisional application. A second advantage of considering claim scope during the drafting process of a provisional application is that it helps to shape the invention’s legal definition early on. A third benefit of the claim drafting process is that it emphasizes the subject matter of the provisional application that must be described in detail in order to meet the “written description” and “enablement” requirements.

Even a modest number of claims in a provisional application can help focus the drafting process and potentially provide stronger priority benefits for follow-up non-provisional and foreign applications.

Read more

Should I File Provisional Patent or Not?

Foreign Patents

Provisional Patents: FAQ


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