FAQ on Provisional Patent Application

Are you looking for safeguarding your invention? Filing a provisional patent is the first thing you should do. In this act, there will be lots of questions raised in your mind. If so, here are some commonly asked questions that will help you for the better understanding. 

  • What is a provisional patent application?

The provisional patent application (“provisional application”) is a document filed with the United States Patent and Trademark Office (USPTO) that establishes an invention’s “priority date,” in other words, that the inventor possessed the invention described in the provisional application at the time of filing. The provisional application must describe the invention sufficiently so that someone with ordinary skill in the art can make and use it without undue experimentation in order to be effective. It is the applicant’s responsibility to ensure their provisional applications adequately describe their invention since the USPTO does not examine them. A provisional application may not be sufficient to establish a priority date for patent claims claiming the invention that eventually are filed and examined in the US and/or abroad.

  • Why should I consider filing a provisional application?

A provisional application allows the establishment of potentially world-wide patent rights without affecting their term expeditiously and relatively inexpensively.

  • When should I consider filing a provisional application?

Public disclosure of the invention should occur before any public disclosure (e.g., conference presentation, poster presentation, department seminar, paper publication, or public announcement);

Before a meeting with sponsors, collaborators, competitors, and/or investors; and/or

After the inventors have brought their invention into practice (or have a good plan for doing so), they plan to continue working on it over the next year.

  • What should a provisional patent application include?

If they describe how the invention is made and used, any type of material can be included in a provisional application (e.g., text, figures, graphs, charts, photographs, and/or drawings). The following questions should be explicitly answered in a provisional application:

What is the invention?

How is the invention made?

How is the invention used?

According to US patent law, provisional applications must answer these questions comprehensively in order to determine a priority date. Nonprovisional U.S. applications are also subject to these legal requirements, called the “written description” and “enablement” requirements.

A good idea is to request any documentation describing or supporting the inventor’s work. You can use theses, manuscripts, journal papers that contain “Supplementary Materials,” computer code (preferably with comments), laboratory notebooks, emails, invention disclosure forms, and presentations.

The novelty of an invention should be confirmed.

  • Should a provisional application include patent “claims”?

A patent claim (for example, the right to prevent others from making, using, or selling an invention) is a right enforceable by a patent applicant. In addition to the written description and enablement requirements, the USPTO grants claims based on utility, novelty, and nonobviousness.

The inclusion of claims in a provisional application can have several advantages despite the fact that they are not examined. If the provisional application includes claims, the nonprovisional application can receive a priority date earlier, which will be examined in the nonprovisional application. Additionally, it assists in defining the invention’s legal definition during the provisional application drafting process when claim scope is considered. To satisfy the “written description” and “enablement” requirements, the claim drafting process places special emphasis on describing the subject matter of the provisional application in detail.

Provisional applications can be strengthened by including a modest number of claims in subsequent non-provisional and foreign applications.

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