Provisional Patent Application Basics

By Michael Neustel, US Patent Attorney

www.neustel.com

Prior to 1995, the only option inventors had to protect their ideas was to file a Non-Provisional Patent Application (NPA).  However, in addition to an NPA, inventors today now have the option of filing either a Provisional Patent Application (PPA) or a NPA.  Unfortunately, many inventors and their patent attorneys don’t always understand the numerous benefits of PPAs. Here are a few tips to help entrepreneurs and inventors learn how to use the PPA to their advantage:

A.   What is a Provisional Patent Application (PPA)?

A PPA is a patent application filed with the United States Patent & Trademark Office (USPTO) that provides an applicant with “patent pending” for a period of one-year.  At the end of this one-year period, the PPA is automatically abandoned with no extensions available.  A NPA can gain priority from the PPA’s filing date if filed during this one-year period.

As with a NPA, a PPA requires a complete written description of the invention.  A PPA must also include any drawings necessary to help describe the intricacies of the invention.  Unlike a NPA, a PPA does not require (1) claims, (2) an information disclosure statement, (3) a declaration, (4) formal patent drawings, or (5) a specific format.

B.   Lower Initial Investment

The main benefit for most inventors filing a PPA is the lower initial investment.  The USPTO filing fee is only $110 for a PPA compared to $462 for a NPA.  In addition, patent attorneys will typically provide a fee reduction of 20% - 40% from a NPA.  On a typical invention, an inventor can initially save around $1,000-$2,000 filing a PPA instead of a NPA.

C.   "Patent Pending" Early

Another benefit of filing a PPA is the ability to receive “patent pending” quickly.  Since a PPA does not have a required format and does not require the complex claims section, a patent attorney or inventor is able to quickly prepare/file a PPA with the USPTO in order to receive an early “priority date.”  An early priority date is sometimes desired because of (1) foreign priority issues, (2) avoiding prior art, (3) constructive reduction to practice, (4) proof of diligence, and (5) one-year deadline approaching because of inventor’s own public disclosure.

Filing a PPA also allows an inventor to place a “Patent Pending” notice upon products, brochures and other related items, which can deter others from copying an invention.  In addition, the inventor can license/sell the PPA to another company while the PPA is pending.

D.   Self-Drafting Easier

A PPA does not require the complex “claims” section and some of the other legal documents required by a NPA.  The claims section of a NPA is usually the most difficult and highly legal part of a NPA.  Since a PPA does not require claims to be included, “self-drafting” a PPA is typically easier for the average inventor.

A PPA does not require preparation of an information disclosure statement or declaration, nor does a PPA require a specific format as is required with a NPA.  In addition, a PPA is not examined by the USPTO for patentability.  Hence, an inventor does not have to learn all of the patent laws of the United States and the Manual of Patent Examining Procedure (MPEP) in order to adequately prosecute a NPA.

E.   One-Year "Safety Net"

Many of the anti-PPA people (mainly patent attorneys) constantly warn about how if the subject matter within the PPA is not fully disclosed, then a subsequent NPA will not be able to rely upon the filing date of the PPA.  What they don’t tell you is that this rule applies to both PPAs and NPAs.  This fear is obviously reduced if you hire a patent attorney to prepare your patent application.

However, self-drafters can rest easy because United States law clearly provides a one-year “safety net.”  Inventors have up to one-year from a public disclosure of their invention to file a patent application (PPA or NPA). 

Consider the following example where you self-draft and file a PPA on 6/10/08, and then publicly disclose your invention for the first time on 6/20/08.  If you made a significant mistake in preparing your PPA, you would still be able to file another patent application (PPA or NPA) to correct your mistake up to 6/20/08 (i.e. within one-year of your first public disclosure).  In other words, you can basically disregard your original PPA and rely solely upon your second patent application for a priority date.  The main downside to this is that you will lose most of your patent rights in most foreign countries by losing your PPA priority date.

F.   PPA vs. NPA

If used wisely, PPAs have numerous advantages for inventors, particularly self-drafters.  Inventors should understand that a PPA has the same effect as a NPA, except that a PPA is not examined by the USPTO and therefore will not issue into a patent by itself.  By reading the cited PPA Resources and this article, you should be able to make a decision as to what is best for your situation.

G.   PPA Resources on the Internet

For more information about PPA’s and their various uses, I recommend that inventors visit the following web sites:

-  USPTO Web Site (www.uspto.gov/web/offices/pac/provapp.htm)

- PatentWizard Software (www.patentwizard.com) – Created by Michael Neustel.

Michael S. Neustel is a U.S. Patent Attorney who owns Neustel Law Offices, LTD (www.neustel.com) and is the founder of the National Inventor Fraud Center.  Mr. Neustel is a co-author of The Patent Writer and is also the founder of Neustel Software, Inc. which develops intellectual property related software products including PatentWizard (www.patentwizard.com), PatentHunter (www.patenthunter.com) and ConfidentialityWizard (www.confidentialitywizard.com).  Mr. Neustel provides intellectual property seminars to businesses and groups across the United States.