Comparatively Speaking: Provisional vs. Non-provisional Patent Application

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The use of a provisional patent application is often the first and most important step in the process of patenting an invention. Provisional patent applications, when properly written and submitted, provide the inventor a 12-month period of protection from the application filing date. It is important to understand that the United States is now a "first-to-file" country. Therefore, this extension of time during which an invention is covered under the application can be critical.

There are several advantageous to using a provisional patent application:

  • It establishes a first-to-file protection to the invention properly disclosed;
  • It allows a one-year timeframe to gather additional information on the market interest in an invention;
  • It allows for the proper use of “patent pending” on a particular product or process;
  • It allows time for fine-tuning one’s invention; and
  • It is relatively inexpensive compared with the full patent application.

The following excerpt from the Manual of Patent Examining Procedure (MPEP) provides greater detail.

"Table 1 MPEP-2020.

Provisional Application

(1) Authorization.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—

    (A) a specification as prescribed by section 112(a); and

    (B) a drawing as prescribed by section 113.

(2) Claim.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.

(3) Fee.

    (A) The application must be accompanied by the fee required by law.

    (B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

    (C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.

(4) Filing Date.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

(5) Abandonment.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.

(6) Other Basis for Provisional Application.—Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.

(7) No Right of Priority or Benefit of Earliest Filing Date.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or 386(a) to the benefit of an earlier filing date in the United States under section 120, 121, 365(c) or 386(c).

(8) Applicable Provisions.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A), 4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and 20(j) (effective Sept. 16, 2012) and sec. 3(e) (effective March 16, 2013), 125 Stat. 284.)"

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