Provisional application

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A provisional application is a patent application filed at the intellectual property offices of some countries. It does not mature into an issued patent and is deemed abandoned one year after its filing. It is used to secure a filing date for a subsequent non-provisional patent application claiming priority of the provisional application. [1] [2] [3] [4] There is no such thing as a "provisional patent". [4] The same term is used in past and current patent laws of different countries with different meanings.

Contents

History

The provisional application was introduced to U.S. patent law with a 1994 amendment of the Patent Act of 1952. [5] A 12-month benefit of priority to foreign-filed applications had been a part of U.S. patent law since the 1901 U.S. ratification of the Brussels revision of the Paris Convention for the Protection of Industrial Property. [6]

Characteristics

Under U.S. law, a provisional application, as such, is never examined by the United States Patent and Trademark Office (USPTO), and therefore never becomes a patent on its own (unless the provisional patent application is later converted into a non-provisional patent application by the applicant, and then the application is examined as a non-provisional application). The provisional application is also not "published", but becomes a part of any later non-provisional application file that references it, and thus becomes "public" upon issuance of a patent claiming its priority benefit. [7]

A "provisional" is automatically abandoned (expires) one year after it is filed. The provisional filing date is not counted as part of the 20-year life of any patent that may issue with a claim to the provisional filing date. [7]

The USPTO announced on December 8, 2010, that it was implementing a Missing Parts Pilot Program. This pilot program would provide applicants with a 12-month extension to the existing 12-month provisional application period. This pilot program would not change the requirement for an applicant to file a non-provisional application within 12 months; though it would allow additional time to reply to a missing parts notice. [8] [ needs update ]

A provisional application includes a specification, i.e. a description, and drawing(s) of an invention (drawings are required where necessary for the understanding of the subject matter sought to be patented [9] ), but does not require formal patent claims, inventors' oaths or declarations, or any information disclosure statement (IDS). Furthermore, because no examination of the patentability of the application in view of the prior art is performed, the USPTO fee for filing a provisional patent application is significantly lower ($60 - $240 as of August 2023 [10] ) than the fee required to file a standard non-provisional patent application.

Procedure and benefits

To obtain the benefit of the "provisional" filing date, a non-provisional patent application must be filed, claiming benefit of the filing date of one or more specific provisional patent applications, [11] prior to their expiration.

The provisional patent application is only pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application claiming the benefit of the provisional application must be done within 12 months. Otherwise, the rights to claim the benefit of provisional application are lost. [12]

If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases). [13]

Information disclosure statements (IDSs) are not permitted in provisional applications. Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office. [14]

The advantages of a provisional patent application are:

See also

Related Research Articles

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In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

A person having ordinary skill in the art, a person of (ordinary) skill in the art, a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws throughout the world. This hypothetical person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. This measure mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not, or involves an inventive step or not. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.

Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.

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In United States patent law, the reduction to practice is the step in the formation of an invention beyond the conception thereof. Reduction to practice may be either actual or constructive. The date of reduction to practice was critical to the determination of priority between inventors in an interference proceeding under the discontinued first-to-invent system as well as for swearing behind a reference under that system.

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Under United States patent law, the term of patent, provided that maintenance fees are paid on time, is 20 years from the filing date of the earliest U.S. or international application to which priority is claimed.

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Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting from a patented technology without the consent of the patent holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

Maintenance fees or renewal fees are fees paid to maintain a granted patent in force. Some patent laws require the payment of maintenance fees for pending patent applications. Not all patent laws require the payment of maintenance fees and different laws provide different regulations concerning not only the amount payable but also the regularity of the payments. In countries where maintenance fees are to be paid annually, they are sometimes called patent annuities.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

In former United States patent law, a statutory invention registration (SIR) was a publication of an invention by the United States Patent and Trademark Office (USPTO). The publication was made at the request of the applicant. In order for an applicant to have a patent application published as an SIR, the following conditions had to be met:

  1. The application must disclose the invention in sufficient detail that another person of ordinary skill in the art can make and use the invention without undue experimentation ;
  2. The application complies with the requirements for printing, as set forth in regulations of the Director of the patent office;
  3. The applicant waives the right to receive a patent on the invention within such period as may be prescribed by the Director; and
  4. The applicant pays application, publication, and other processing fees established by the Director.

The involvement of the public in patent examination is used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or non-obviousness, and sufficiency of disclosure.

Title 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections, in Title 35.

The copyright status of the content of patent applications and patents may vary from one legal system to another. Whether scientific literature can be freely copied for the purpose of patent prosecution is also a matter for discussion.

<span class="mw-page-title-main">Backlog of unexamined patent applications</span>

Although not clearly defined, the backlog of unexamined patent applications consists, at one point in time, of all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and in 2009 it reportedly continued to grow. The United States Patent and Trademark Office (USPTO) alone had a backlog of ca. 700,000 patent applications in 2009. By May 22, 2024 this number grew to 783,134 applications.

<span class="mw-page-title-main">Leahy–Smith America Invents Act</span>

The Leahy–Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the U.S. patent system since the Patent Act of 1952 and closely resembles previously proposed legislation in the Senate in its previous session.

References

  1. ↑ "Provisional patent applications". IP Australia . Retrieved 2025-01-03.
  2. ↑ "Cas particulier : la demande provisoire de brevet". Institut national de la propriété industrielle (in French). 2020-06-30. Retrieved 2025-01-03.
  3. ↑ "Provisional Application for Patent". United States Patent and Trademark Office . Retrieved 2025-01-03.
  4. 1 2 David Pressman, Patent It Yourself, Nolo Press, 2006, page 56, ISBN   1-4133-0516-4.
  5. ↑ Ladas & Parry LLP (2009-07-17). "A Brief History of the Patent Law of the United States". Archived from the original on 2013-01-15. Retrieved 2010-11-05. The basic structure of the present law was adopted in 1952. ... Since 1952, the law has been amended several times and has continued to develop by way of case law. ... Some of the major changes that have been made since 1952 are as follows: ... 1994 ... Introduced the possibility of filing provisional patent applications. 35 USC 111(b) and 119(e)
  6. ↑ Chisum, Donald (2010). "Volume 4A, Chapter 14 Priority by Foreign Filing, § 14.02 Historical Development". Chisum on Patents. Seattle: Matthew Bender/LexisNexis.
  7. 1 2 Provisional Application for Patent published by the United States Patent & Trademark Office.
  8. ↑ USPTO Implements Pilot Program
  9. ↑ 35 U.S.C. 113 Drawings Archived June 1, 2009, at the Wayback Machine
  10. ↑ "Current Fee Schedule" (PDF). Retrieved May 6, 2021.
  11. ↑ "37 C.F.R. 1.78(a)(4)" . Retrieved 2007-09-01.
  12. ↑ "35 U.S.C. 111(b)(5)" . Retrieved 2007-09-01.
  13. ↑ For the purpose of claiming the priority of a subsequent provisional application (e.g. a second provisional application) in a PCT application or foreign (non-US) application under the Paris Convention, the filing of the subsequent provisional application will only be the starting date of another valid priority year if, at the time of filing the subsequent provisional application, the first provisional application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it (the first provisional application) has not yet served as a basis for claiming a right of priority. The first provisional application may not thereafter serve as a basis for claiming a right of priority. See Article 4 C. (4) of the Paris Convention.
  14. ↑ "MPEP".
  15. ↑ "Provisional Patent Applications". Archived from the original on 2007-08-16. Retrieved 2007-09-01. "The importance of this is that you can lock in your priority filing date with the provisional application, while at the same time you are permitted to apply the coveted term "Patent Pending" to your invention and/or products. This is important because you cannot use the term "patent pending" or "patent applied" legally in the U.S. unless you do actually have some kind of a patent application on file with the Patent Office."
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