Provisional Patent

By filing a provisional application first, and then filing a corresponding non-provisional 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.

The later-filed non-provisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter, which the applicant regards as the invention. Although a claim is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date.

Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application. There is no requirement that the written description and any drawings filed in a provisional application and a later-filed non-provisional application be identical, however, the later-filed non-provisional application is only entitled to the benefit of the common subject matter disclosed in the corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention.

Since 1995, the United States Patent and Trademark Office has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date. Under the provisions, the corresponding non-provisional application would benefit in three ways:

  • patentability would be evaluated as though filed on the earlier provisional application filing date
  • The resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date
  • And the twenty-year patent term would be measured from the later non-provisional application filing date. Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term. Inventors may file U.S. provisional applications regardless of citizenship. Note that provisional applications cannot claim the benefit of a previously filed application, either foreign or domestic.
A provisional application for patent allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It also allows the term "Patent Pending" to be applied in connection with the description of the invention.

Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition requesting such a conversion within 12 months of the provisional application filing date.