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Filing a Provisional Patent Application – Applicant Beware

The world changed as we knew it on June 8, 1995, when the United States Patent and Trademark Office (“USPTO”) was required to implement certain provisions from the GATT Uruguay Round Agreements. One of the modifications that occurred as a result of the GATT Agreements was that the lifetime of a United States Utility Patent was changed from 17 years from the issue date of the patent to 20 years from the effective filing date of the patent application.

The second change, and is the subject of this article, was the addition of being able to file a provisional patent application. The U.S. applicants parity with foreign applicants under GATT.

Prior to the 1995 changes, there were only three types of patents available to inventors: utility, design and plant. Plant patents are quite rare and design patents are relatively common, and utility patents are the most desired but are the hardest to obtain and the most expensive. Before the creation of the provisional application, foreign applicants had an advantage in that they could extend the lifetime of their U.S. patents to 21 years as determined by the filing date of their home country patent application. This one-year extension would occur if the foreign applicant delayed filing the U.S. application for the permitted one-year period (following their filing of the parent application in their home country) and then claimed priority back to their home country application under the Paris Convention. With the genesis of the provisional application, the playing field was leveled by giving U.S. applicants the same opportunity as foreign applicants to extend the lifetime of the patent to twenty-one years from the filing date of the provisional application.

What exactly is a provisional patent application? People routinely call this statutory creation a wide variety of names, including: “manuscript application,” “dirty provisional application” and a “quickie application.” These alternative names convey the meaning that provisional applications are less extensive than the typical non-provisional utility application and can usually be completed in a short period of time. This portrayal is accurate to a point, but one must be careful not to fall into some of the traps that surround use of the provisional application.

The provisional application is a U.S. national application and is filed without any formal patent claims, an oath or declaration by the inventor, or any information disclosure (prior-art) statement. Hence, the “less expensive” characterization. The application provides a means for establishing an early effective filing date and allows the applicant to use the terms “Patent Pending” in relation to the disclosed invention. Allowing one to use these words is, in and of itself, a tremendous value to most applicants and corporations. A critical limit to provisional applications is that its pendency only lasts for 12 months from the date of filing, and this time period cannot be extended. Thus, an applicant must act during this one-year period or risk losing the advantageous earlier priority date.

Certain requirements must be met by the applicant in order for the USPTO to grant the provisional application a filing date. First, the provisional application must be made in the name(s) of all of the inventor(s). This is sometimes a difficult task because the application may be filed without claims, and inventorship is determined by who contributed to what is being claimed. The application can be filed up to 12 months following the date of the first sale, the first offer for sale, public use or publication of the invention. One needs to be keenly aware that such pre-sale invention disclosures may preclude patenting in foreign countries. The USPTO will only record a filing date to a provisional application when the application includes a written description of the invention that complies with U.S. patent law. Specifically, the written description must disclose the manner and process of making and using the invention in such full, clear, concise and exact terms so as to enable any person skilled in the art to make and use the invention (See 35 U.S.C. §113). Thus, the applicant must satisfy the long-standing “enablement” standard that is required of non-provisional applications. The reason for this disclosure requirement will be discussed later in this article, as will the potential fallout if the provisional application fails to include the required common subject matter in the written description with the later-filed non-provisional application.