File a Non-Provisional Patent Application or Provisional Application

An inventor may file a patent application with the USPTO themselves or they may hire a patent agent or patent attorney to write and file the application. Inventors who qualify under small entity status or will save 50% on many USPTO application fees and those who qualify under micro entity status will save 75% on many USPTO fees.


Non-Provisional Patent Application

A Non-Provisional Utility Patent is what most people think of when they think of a U.S. Patent.

A Non-Provisional Patent Application permits the term “Patent Pending” to be applied in connection with the invention after the filing of the patent application and after issuance as a patent provides patent protection--”the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time (20 years from filing) in exchange for public disclosure of the invention.


Some provisional rights accrue after publication of a non-provisional patent application (generally at 18 months after filing, earlier publication can be requested) but before issuance under certain circumstances. See Patent Pending/Publication of Patent Application.


Most patents applications that are received by the USPTO are for non-provisional patent applications. Three types are available-utility, design and plant patents. Over 85% of issued patents are utility patents. (The USPTO has a breakdown of Patent Examining Activities at http://www.uspto.gov/web/offices/com/annual. Not Just Patents has a breakdown of Patent Statistics at USPatentStatistics.com.)


There are myriad requirements for a patent application. The Manual of Patent Examining Procedure (MPEP), a manual with practices and procedures relative to the prosecution of patent applications before the USPTO, is over 3000 pages long.

In broad terms, a complete application comprises a specification as prescribed by 35 U.S.C. 112, including a claim or claims; an oath or declaration; and drawings (when necessary to illustrate the invention); and and the prescribed fees. The invention must be conveyed to the public in a meaningful way showing its novelty, essence, embodiments and utility and be completely enabling so that a person who is skilled in the art could build the invention without undue experimentation. For guidance on what a non-provisional application must contain, see A Guide to Filing A Non-Provisional Utility Patent from the USPTO.


See What to Expect from a Not Just Patents Patent Application to find out specifics on having a Not Just Patents Patent Attorney prepare your patent application (and patent search).


Provisional Patent Application

A Provisional Patent Application provides a means to establish an early effective filing date in a utility or plant patent application and permits the term “Patent Pending” to be applied in connection with the invention with less up-front requirements (no claims). Only the subject matter and specifications that are disclosed in the provisional application can claim the filing date of the provisional application. A non-provisional application must be filed within 12 months of the provisional patent filing and claim the benefit of the provisional application  or must be converted to a non-provisional application within 12 months or the filing date is not preserved. A Provisional Patent Application is automatically abandoned after 12 months and cannot be revived. Provisional patent applications are not examined or published and do not mature into patents.


The USPTO lists these Cautions and Features of Provisional Patent Applications at: http://www.uspto.gov/web/offices/pac/provapp.htm.


Cautions

    * The benefits of the provisional application cannot be claimed if the 12 month deadline for filing a non-provisional application has expired.

    * A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of the provisional application filing date:

         1. a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or

         2. a grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.

    * Provisional applications for patent may not be filed for design inventions.

    * Provisional applications are not examined on their merits.

    * Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic.

    * It is recommended that the disclosure of the invention in the provisional application be as complete as possible.

    * In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.

    * If there are multiple inventors, each inventor must be named in the application.

    * All inventor(s) named in the provisional application must have made a contribution either jointly or individually to the invention as disclosed in the application.

    * The non-provisional application must have one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.

    * A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.

    * There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.

    * Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.

    * No information disclosure statement may be filed in a provisional application.


Features

    * Provides simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;

    * Establishes an official United States patent application filing date for the invention;

    * Permits 12 month ’s authorization to use "Patent Pending" notice in connection with the description of the invention;

    * Begins the Paris Convention priority year;

    * Enables immediate commercial promotion of the invention with greater security against having the invention stolen;

    * Preserves application in confidence without publication in accordance with 35 U.S.C. 122(b), effective November 29, 2000;

    * Permits applicant(s) to obtain USPTO certified copies;

    * Allows for the filing of multiple provisional applications for patent and for consolidating them in a single §111(a) non-provisional application for patent; and

    * Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).


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