1. What is a provisional patent application (PPA)?

  • The provisional application is a short-term means of protecting an invention or concept and requires less effort and expense than a formal patent application (non-provisional patent application).  Both processes get submitted to USPTO.
  • The application protection expires after 12 months, whether or not its inventor files a full patent application.
  • The provisional patent application records signals of an intention to follow up with the details in a formal patent application.
  • It can be used as prior art to another inventor claiming to have had the same idea. It can be regarded as the first step in obtaining a patent.

1.1  What is provisional patent application (PPA)?

A provisional patent application (PPA) is an inexpensive approach that preserves your rights while you are deciding whether to file a regular utility patent application. For a low investment, a PPA provides you with a one-year option to later acquire a regular patent if your invention becomes valuable. Basically, it is a place holder so that you can claim priority to the PPA’s earlier filing date when you later convert it into a utility patent application.
Note that the value of your PPA is only as valuable as the care and thought you put into it. Errors and inaccuracies will undo your protection. A full and complete detailed write-up of your invention in the PPA, along with professional review, may ensure maximum protection for your invention.

1.2  What are the benefits of a provisional patent?

The benefits of provisional patent applications include:

  • Preservation of priority date
  • A useful one-year delay
  • Effectively, an extra year of protection
  • Constructive reduction of an invention to practice
  • Preservation of non-U.S. priority date
  • Avoidance of one-year statutory bar
  • Preservation of absolute novelty for foreign filings
  • Application of “patent pending”

Provisional patent applications (PPAs) enables you to get patent-pending status on a limited budget, which can be important early in the life of your company.  The patent-pending status enables you to explore commercial potential, continuing R&D, and/or finding investors.  In addition, as the utility patent life counts when the utility application is file, the combination of PPA and utility filing provides an extra year of early filing date without counting against the 20-year life of the eventual utility patent.

  • Provides basic protection for the idea disclosed in the PPA for one year while you evaluate the business and/or technical merits of your idea.
  • Costs less than full utility patent application. A PPA costs hundreds of dollars, rather than the thousands or tens of thousands of dollars to have patent lawyers prepare a full utility patent application.
  • Establishes an official USPTO record of your date of the invention, so you can reap the benefits of an early filing date.
  • Begins the clock for the Paris Convention priority year. That means that you have to file international applications within one year.
  • Allows you to use a “Patent Pending” notice to deter others from copying your idea.
  • Is easy to prepare. There is no formal requirement concerning format/style and formal papers, such as the Inventor’s Oath or Declaration and the Information Disclosure Statement, to disclose all relevant information known to the inventors. Thus, virtually anyone can draft a PPA.
  • Adds one year of life to a U.S. utility patent application. Because the utility application’s life begins when the PPA is converted into a utility patent application. So, the invention can be protected using the patent system for as long as 21 years from the PPA filing date.

1.3  What are the drawbacks of a provisional patent?

  • Inaccuracy will undo your protection.
  • Modifying your invention or adding new improvements will force you to file a new provisional application or regular patent application.
  • You must file a utility patent application within a year.
  • Only preserves your rights for a year and does not result in a utility patent by itself. To get longer protection, you must convert the PPA to a utility patent application within one year of filing the PPA. If your invention is “in use” or “on sale” in the United States and you file a PPA but fail to timely convert the PPA into a utility application within the twelve month period, you may lose the right to ever patent the invention.  That’s because the use or sale of the invention can be prior art against your own subsequent patent application.
  • Delays examination of the patentability of your invention. A PPA is not examined until you convert it to a full utility patent application.
  • Triggers the one year international filing deadline. So, one year from filing a PPA, you need to file a (PCT) or directly file in the countries that you’d like protection in, if you want to claim the PPA’s filing date for the corresponding international applications.
  • It’s only effective in the United States.
  • Is worthless if the invention changes so much so that it is not what is described in the PPA.

1.4  What is the recommended format for a provisional patent application (PPA)?

  • While there is no format requirements, a PPA ideally should have:
      • title,
      • background,
      • Description on product’s design, and the purpose that it serves, and any drawing illustrations.

The underlying requirement for a PPA is that you must sufficiently describe how to use and make your invention.  In particular, the specification is the bulk of your application.  It includes the:

  • Title;
  • Background;
  • Summary;
  • Drawings summary;
  • How the invention operates;
  • How it’s built, including the best mode for constructing it;
  • Abstract; and
  • Claims, though these are optional for PPAs.

Some of these will be discussed below.

1.4.1  Title

The title is a short description of your invention. It should be less than 500 characters.

1.4.2  Abstract

The abstract enables readers to determine the nature of the technical disclosures of the invention quickly. It is generally limited to a single paragraph and should not be longer than 150 words.

1.4.3  Drawings

Drawings should be done prior to drafting the detailed description because they will help you draft those texts in a logical order.
According to the USPTO, you should provide drawings where necessary for the understanding of the invention. The drawings must be filed with the application. They can include flow sheets in cases of processes, and diagrammatic views for mechanical or electrical inventions.
For a PPA, you may submit informal drawings or photographs. However, for a utility patent application, the USPTO has established certain requirements for drawings.

1.4.4  Description

While the PPA is not checked for sufficiency of disclosure or enablement, you should provide a thorough, thoughtful disclosure that includes how to implement–construct and use–your invention. The disclosure should be more than just formulating a desire to accomplish something–that is called wishing, not inventing.
It should be sufficient to allow one of ordinary skill in the art to construct a product or perform a process with unduly extensive research or experimentation. You should teach specific, concrete ways of achieving the desired result. Writing details will show the USPTO that you have a definite idea of the complete and operative invention.
If there is more than one way to operate or build your invention, you should write down the best mode for constructing your invention and detail the best way to use it. If you do not do this and later file for a utility patent, your application may fail. Any additional functions should also be noted, but they should be described succinctly.

1.4.5  Prior art

While there is no information disclosure statement (IDS) filing in a PPA to submit prior art citations to the PTO, you should still save citations to known prior art when you convert the PPA to a utility application in the IDS. To anticipate the argument that such known prior art renders your invention obvious, you should note any discoveries of the relevant prior art and how your invention differs. It’s helpful to also describe what advantages your invention has in relation to the known prior art. You are under no duty to do a search, but if you are aware of known prior art, you need to disclose them to the PTO using the IDS

1.4.6 Inventor

It can be tricky to determine the inventorship of a provisional application. Again, U.S. law generally regards any individual who contributed to the conception of an invention as recited in one or more claims of a patent application as an inventor. However, there is no requirement for claims in a PPA. If your PPA does not have claims, determining the inventor can be hard.
It might be helpful to know that some lawyers determine inventorship based on the invention as described in the PPA’s specification. Using the specification, they’ve concluded that anyone who contributed to the PPA’s description and drawings may be listed as an inventor. On the other hand, anyone who contributes only lab or assembly labor, supervision of routine techniques, or other non-mental contributions, should not be considered an inventor. If you made an error in listing inventor(s), rule 37 C.F.R. 1.48(e) indicates that:
(e) Provisional application—deleting the name or names of the inventor or inventors. If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
(3) The processing fee; and
(4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee.

1.4.7  Multiple inventions

You can include multiple invention disclosures in one PPA. The USPTO charges extra fees if you exceed a certain number of pages in your applications, however.

1.4.8  Fees

You should pay the filing fees when you submit your PPA. If you don’t, the USPTO will send you a notice with a deadline to respond. You have up to six months from the mailing date to respond with late fees. If you miss the deadline and file for a utility patent later, then you cannot claim the benefit of the earlier PPA filing date. Consequently, you lose valuable patent rights.
For example, if your invention is “in use” or “on-sale” in the United States after you’ve filed a PPA, but you fail to timely convert the PPA into a utility application within the twelve months, you may lose the right to ever patent the invention. That’s because your inability to claim priority to the PPA would leave the use/sale of the invention as prior art against your own subsequent utility patent application.

1.5  What should I think about in drafting the PPA application?

Before you start the filing process, you should ask yourself whether the idea is patentable. You should also consider criteria like timing, cost, and type and subject matter of an invention. Factors include:

●    Why is the invention needed? What problem is addressed, and what problem should the invention solve?

●    What major component/parts make up the invention? Can you eliminate, rearrange, or combine these components?

●     What components are new in the invention, and why are they needed? Are there equivalents for these components?

●    How are the components interconnected? Is the interconnection novel? Are there non-obvious advantages arising from your specific arrangement or interconnection?

●     What part(s) of the invention took the longest to develop, and why?

●    Are there other ways to perform the same function provided by the invention?

●     What problems does the invention solve, and what was the most difficult part of the problem that it solved?

●     What can alternative solutions be used in lieu of the invention?

●     What advantages does the invention have over alternative solutions, and how are these advantages achieved?

●     What features are desired by customers or end-users, and how can the competition provide them?

●     What features are desired by the competition, and how can the competition provide them?

●     What features are likely to be copied, and how can the competition copy them without violating your patent application (so you can describe potential design around)?.

●     Does the invention improve on an existing product? In what way and how do you achieve the improvements?

●     What other approaches might work in solving the problem?

●     What components or elements can you add?  What can you remove?

●     How can you simplify or rearrange the major components or elements of the invention?

●     What parts can you substitute or combine?

●     For key elements or components, what’s the opposite of such elements?  How can you use such opposite(s) in the invention?

●     Is the invention as simple as it can be? What can you eliminate?

●     Can you make it easy and inexpensive? How?

Companies regularly file for patents because they amplify the business value.  For example, the patents covering a block buster drug can be worth billions.  The exclusivity afforded by patent rights allows manufacturers to recoup their substantial investments in research, development, and regulatory approval.

Although the filing formalities required of a utility application is not needed in the PPA, we recommend you supply details in the material you put into the PPA. The PPA must teach or enable others how to make and use the invention, and you must disclose enough detail to show others what you invented. The GIGO rule applies here: garbage in, garbage out.  If you provide high quality material into the PPA you will get the most value out of your early filing date.

1.6  What is optional for a PPA?

  •  Provisional applications are not examined, and thus there is no requirement to include claims and prototype it is always optional.

1.6.1  Claims

This is not required in a PPA, but it is required in a utility patent application. While not needed in the PPA, you should still try to express in the broadest possible expression the essence of how your invention works and the minimal components needed to implement your invention. You should think about these because patent protection rests on what claims you are asserting in your application. They lay the borders of what is protected by your patent. The USPTO sets guidelines about how these should be formatted.
Because claims are central to determining infringement, they should be crafted with care, be precise and understandable. Frequently people who wish to design around your patent manipulate the language used in your application to interpret your claims in a narrow light to justify that they do not infringe. They also make variations to achieve the same objective by using a different approach to avoid your claims. Hence, make sure your patent application text is detailed and inclusive of possible variations to avoid attempts to bypass your idea. But be careful not to make these variations necessary or required.

1.6.2  Prototype

A prototype is not required for a provisional or utility application. However, if you did build a prototype, let the world know about it.
Because a PPA is relatively inexpensive, the inventor can describe reasonable ways to implement the invention on paper without prototyping. If enough details are disclosed, the PPA can become the basis of a valuable pioneering patent with the earliest possible priority date by avoiding prototyping delays.

1.7 What do you do for improvements after PPA filing?

If you have new information on improvements to the invention that you didn’t include in the PPA and you are close to the utility patent filing deadline, you can include additions to the utility application to avoid the cost of filing another PPA. But if the utility filing deadline is still a long time away, you may want to file another PPA if the new information is patently significant or the improvements are substantial. If you have incremental improvements, you may want to wait to incorporate those improvements in the utility patent application.

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