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PROVISIONAL APPLICATIONS

Since June 8, 1995, the U.S. Patent and Trademark Office has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

A provisional application allows for filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. The beauty of the provisional application is that it locks in your priority date. In other words, your filing date for any later filed non-provisional ("regular") application will be that of the provisional. Additionally, filing a provisional patent allows the term "Patent Pending" to be applied, which can have significant marketing advantages. Finally, one of the biggest benefits of a provisional application is that there is no required format to follow. Just take whatever disclosure you have and file it with the appropriate cover sheet and you have a provisional application. This is particularly helpful when you are up against the clock and something needs to be filed immediately in order to establish a priority date.

A provisional application for patent lasts only 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (i.e., "regular patent application") during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months. This is because the patent term will expire 20 years from the filing date of the non-provisional (i.e., "regular") application. The importance of this is that you can lock in your priority date with the provisional, apply "Patent Pending", and wait 12 months before you file the non-provisional application. The effect is that you have locked in your priority date for 12 months without the patent exclusivity term beginning to run.

Although a claim is not required in a provisional application, the written description and any patent drawings of the provisional application must adequately support the subject matter claimed in the later filed nonprovisional application in order to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed nonprovisional application. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. The fees applicable to provisional applications also tend to be lower than standard applications, which is particularly helpful for individuals, small businesses and universities.

While the benefits of a provisional application are enormous, it is critical to remember that a carelessly prepared provisional is a waste of time and money. Anyone who has seen what commonly passes in the industry for provisional applications knows many, if not most, are not worth the paper they are written on. The specification and drawings still need to be complete, broad in terms of what is described, and specific to make sure you are meeting all patentability requirements. Cutting corners on the provisional makes an application useless.

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