If you haven’t seen it, the USPTO offers a little guide on filing a provisional application for a patent. Besides giving a brief overview of the history, purpose and filing date requirements, it offers a nice list of cautions about their use. As patent attorneys soon find out, inventors hear about provisional patent applications and then come to you asking for one of those $100 applications.
I’m thinking of keeping the list of cautions as a stock document to send to prospective patentees so that I ensure they are duly warned. See below:
Cautions
Provisional applications are not examined on their merits.
The benefits of the provisional application cannot be claimed if the one-year deadline for filing a non-provisional application has expired.
Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic.
It is recommended that the disclosure of the invention in the provisional application be as complete as possible. In order to obtain the benefit of the filing date of a provisional application the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
If there are multiple inventors, each inventor must be named in the application.
The inventor(s) named in the provisional application must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the 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.
A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional 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.
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:
- 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
- a grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.
Warnings
A provisional application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional-application filing.
Beware that an applicant whose invention is "in use" or "on sale" (see 35 U.S.C. ?102(b)) in the United States during the one-year provisional-application pendency period may lose more than the benefit of the provisional application filing date if the one-year provisional-application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. ?102(b)).
Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000.
Independent inventors should fully understand that 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.
I would just add that "you get what you pay for" still applies.
