Questions and Answers about Provisional Patent Applications

Are you in need of protection for your invention? The first step is to file a provisional patent online. As a result of this act, you will have many questions on your mind. These frequently asked questions may help you better understand. 

It is important to note that provisional patent applications (“provisional applications”) are documents filed with the United States Patent and Trademark Office (USPTO) that establish an invention’s “priority date,” which means the inventor possessed the invention described in the provisional application when it was filed. It must describe the invention sufficiently for someone with ordinary skill in the art to make and use it without undue experimentation in order for the provisional application to be effective. USPTO does not examine provisional applications, so applicants must describe their invention adequately. USPTO does not examine provisional applications, so applicants must describe their invention adequately. Patent claims claiming the invention that eventually are filed and examined in the US and/or abroad may not be entitled to priority based on a provisional application.

  • What are the benefits of provisional applications?

Patent rights can be established expeditiously and relatively inexpensively with a provisional patent application.

  • Is there a deadline for filing a provisional application?

A public disclosure of the invention must occur before any other public disclosure (e.g., a conference presentation, a poster presentation, a department seminar, a publication, or a public announcement);

Whenever possible, before meeting sponsors, collaborators, competitors, and/or investors

Over the next year, they plan to continue working on their invention (or they have a plan to do so).

  • Can you tell me what should be included in a provisional patent application?

A provisional application can include any type of material as long as it describes how the invention is made and used (for example, text, figures, graphs, charts, photographs, and/or drawings). The following questions should be explicitly addressed in provisional applications:

How does the invention work?

What is the process of making the invention?

What is the purpose of the invention?

A provisional application must answer these questions comprehensively in order to determine its priority date. These legal requirements apply to U.S. applications that are not provisional, also known as “written description” and “enablement”.

If the inventor has any documentation describing or supporting his work, you should ask for it. You can use thesis, manuscripts, journal papers with “Supplementary Materials,” computer codes (ideally with comments), laboratory notebooks, emails, invention disclosure forms, and presentations.

An invention’s novelty must be proven.

  • Should a provisional application include patent “claims”?

A patent claim is a right that is enforced by the patent applicant (such as preventing others from using, making, or selling the invention). Patents are granted based on utility, novelty, and nonobviousness, as well as written descriptions and enablements.

Even though claims are not examined in a provisional application, they can be advantageous. When the provisional application contains claims, the nonprovisional application can receive a priority date earlier. In the process of drafting a provisional application, it assists in defining the invention’s legal definition. The claim drafting process of a provisional application emphasizes describing the subject matter in detail to satisfy the “written description” and “enablement” requirements.

The addition of modest claims to provisional applications can strengthen non-provisional and foreign applications.

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