Provisional Patent Application 101
Updated: Aug 26, 2020
What is a Provisional Patent Application?
A provisional patent application (PPA) is a legal tool that was introduced by the U.S. Patent and Trademark Office (USPTO) in 1995. Provisional patent applications are filed in the USPTO and establish an early effective priority date for a non-provisional patent application (NPA) that is subsequently filed. The PPA has a 12-month pendency period from its file date. In order to benefit from the PPA file date, the inventor must submit a corresponding non-provisional application within the 12-month period that references the PPA.
Are PPAs published?
A PPA becomes accessible to the public only if the inventor chooses to file a corresponding NPA. A filed NPA is published 18 months from its priority date and becomes accessible to the public. A PPA that is not referenced by an NPA within the 12-month period following its filing does not mature into an issued patent and does not become accessible to the public. The option to file or not to file a corresponding NPA provides inventors with valuable flexibility in managing their patenting activities.
What are the requirements for filing a PPAs?
The PPA offers inventors an affordable way of obtaining a priority date for their invention. The provisional application does not get examined by the Patent Office and its filing requirements are considerably reduced. The provisional is not required to include a claim, an oath or declaration, or an Information Disclosure Statement (IDS) listing relevant prior art.
The PPA requires a written description of the invention that complies with the requirements of the NPA specification, also known as 35 U.S.C. 112 first paragraph. It should also include drawings where necessary to clarify the subject matter.
The PPA requires a filing fee and a cover sheet identifying the application as a provisional application for patent. The cover sheet includes the title of the invention, information regarding the inventors, name and registration number of attorney or agent and docket number (if applicable) and correspondence address.
The NPA- PPA comparison
The provisional patent application (PPA) is often confused with the more common, non-provisional patent application (NPA), also known as a patent application. The following table highlights key differences between the two applications.
The NPA has rigid guidelines with respect to format and contents. It is examined rigorously on both. The PPA is not examined and has reduced requirements with respect to format and to some of the contents.
The NPA includes claims, which form the body of the patent application. They are often referred to as THE INVENTION. The PPA does not require that claims be
The NPA requires the inventor to submit an information disclosure form (IDS). The IDS lists relevant background art known to the inventor at the time of its submission. It includes relevant documents identified in a prior art search. The PPA does not require an IDS to be filed.
Both NPA and PPA require a list of inventors. An inventor is a person who made an inventive contribution to the invention as defined by the claims of the patent application. The inventors listed in the PPA must have contributed to the claims in the corresponding NPA. Again, the only way to comply with the PPA requirement is to list the inventors, draft the claims, or define their scope while the PPA is being prepared.
Both documents require a specification that complies with patent law under Title 35 of the United States Code., Section § 112. The patent specification is drafted to meet the written requirements for patentability and define the scope of the claims.
Requirements of the PPA - NPA specification
The PPA specification must describe the invention, that is, the claims that are delineated in the NPA, which is submitted at a later time. Often, after one year.
Although the claims are not formally required in the PPA, the only way to comply with the PPA specification requirement, is to draft the claims, or define their scope, during the preparation of the PPA.
In order to comply with the patentability requirements, the specification must demonstrate the invention is novel and non-obvious. Novelty and non-obviousness are evaluated with respect to the prior art. Although an IDS is not required in the PPA, in order to comply with the specification requirement, it is prudent to review the prior art in advance of filing the PPA.
The PPA Catch-22
In summary, to obtain the benefits provided by the PPA, all of its requirements need to be considered at the outset of the process. Although claims are not formally required, complying with the specification requirement means the inventor must clearly define the invention prior to filing the PPA.