A provisional application for patent lasts 12 months from its filing date. The USPTO will not grant extensions for any reason.

The inventor(s) must file a Non-Provisional Patent Application within that period to take advantage of the Provisional Application for Patent’s filing date. If not, the provisional application is declared abandoned and its filing date is lost.

Another Provisional Application for Patent or even a Non-Provisional Patent Application for the same invention can still be filed, just without the benefit of the earlier filing date.

An applicant who files a Provisional Application for Patent must file a corresponding Non-Provisional Patent Application within 12 months to benefit from the provisional filing date. The corresponding Non-Provisional Patent Application must specifically refer to the Provisional Application.

The USPTO will then compare the Non-Provisional Patent Application with the earlier-filed Provisional Application. If the subject matter of the descriptions is determined to be the same in both applications, the USPTO will grant the applicant the provisional application’s earlier filing date for any patent that issues.

Alternatively, an applicant can convert a Provisional Application for Patent to a Non-Provisional Application. This option saves the applicant little effort, however, and virtually no money. Furthermore, the Provisional Application’s filing date is lost and the filing date for any patent that issues will be the date of conversion.

Drawings (illustrations) submitted with a provisional application can be informal. That is to say, they do not need to be in any standardized form. However, the USPTO strongly recommends submitting specific drawings that adequately depict your invention. This is because detailed illustrations make it easier for the USPTO to later associate a corresponding Non-Provisional Application you file with this earlier filed Provisional Application. Further, if drawings are necessary for someone skilled in the field of your invention to practice that invention, the drawings you include in your Provisional Application must be detailed enough to do so. If the drawings filed with your Provisional Application fail to meet this requirement, any corresponding Non-Provisional Application may not receive the Provisional Application’s priority filing date. My Patent Guys can also help you obtain professional top-quality illustrations.

Please refer to the Education Center, “Drawing(s) of the Invention” under the “Filing Requirements for Provisional Applications for Patent” header.

The DDP was created in 1969 to give inventors the option of submitting evidence of an invention’s conception beyond the somewhat questionable practice of the “self addressed envelope.” At this time, commercial services for individual inventors were not as widespread as they are now.

Records filed through the DDP can still provide a timeline evidence of conception. In the event of a dispute, an inventor may still be required to offer additional proof of exactly when the invention was reduced to practice. A non-expired provisional application filing date would be accepted by the Patent Office as a date of invention without the need for additional such evidence.

In comparison to the DDP filings, a provisional application allows the inventor to:

• Claim the provisional application’s priority filing date in a non-provisional patent application submitted within one year.
• Claim “patent pending” status during the provisional application’s duration.
• Forego building and testing a prototype.
• Forego the need to demonstrate the invention to witnesses and have them attest to this.
• Establish a U.S. filing date for foreign applicants.
• File for patent protection in foreign countries which have an “absolute novelty” rule. This bars anyone from obtaining a patent on an invention that has been disclosed in any way before a patent application has been filed.

A provisional application for patent is a great first step towards protecting your invention. It establishes an early filing date for your invention while you put the finishing touches on it, finish your non-provisional patent application, seek funding and do market research. Having a provisional application on file means that you can disclose details about your invention with everyone on notice that your invention is “Patent Pending.” (You can use the “Patent Pending” label for the entire duration of your 12 month provisional period, or for the entire examination period of your non-provisional utility application.) Also, provisional applications are not published by the USPTO so as not to compromise your invention’s secrecy.

Provisional applications are less expensive and easier to file than non-provisional patent applications, can be done quickly, and should be done in advance of an invention’s public disclosure, although following a disclosure is fine also. Most importantly, filing a provisional application establishes an official filing date with the USPTO–and now that the PTO is moving from “First-to-Invent” to “First-Inventor-to-File,” your filing date is the single most important determinant of who gets a patent.

With a provisional application on file, you can feel safe promoting your invention. Finally, if you significantly improve or change your invention after filing your provisional application, or decide not to go forward with a non-provisional application, the lower cost and turnaround time of a provisional application means that you haven’t gone through the more costly and difficult non-provisional process prematurely or unnecessarily. Finally, multiple provisional applications can be combined into a single, later-filed non-provisional application–if your first provisional application sufficiently details the invention that appears in your non-provisional application, you can get your earliest possible filing date for the entire invention!

A provisional Application for patent may be filed anytime after your invention is created – once you are able to fully describe how to make and use it. Some people wait to file a provisional application to delay the start of the 12-month clock. For example, you may want to file a provisional application before an event where you’d like to publicly present your invention with “patent pending” status.

Important note: If you’ve already disclosed your invention to the public (such as by sale, offer for sale, use in public or written publication), a provisional application may still be filed to establish a filing date, but you have exactly one year FROM THAT INITIAL DISCLOSURE to file your non-provisional application–your disclosure starts the clock. In other words: a non-provisional patent application must be filed no later than one year after the public disclosure. Such disclosures include, but are not limited to: sales, offers for sale, written publication, disclosure to potential partners or finding source. Please contact the USPTO or an attorney if you’re unsure whether or not you fall into this category.

Particularly under the recently-enacted America Invents Act, filing a provisional application for patent as soon as possible is best. As soon as you can describe your invention in terms that will be recognizable to an examiner who later reviews your corresponding non-provisional application and has to determine whether the invention contained in both applications is the same, file your provisional application for maximum protection. If you need to file later provisional applications to make adjustments that fit within the original filing, you can always do this and then combine all your provisional applications into a final, corresponding non-provisional application. You can’t broaden the original invention in subsequent provisional applications, but you can clarify, explain, hone or narrow it. This gives you a lot of flexibility as to how to proceed while ensuring that you have the best protection possible while you’re putting the finishing touches on your invention.

Inventors seeking full patents must include four things in their applications: (1) a written description; (2) an oath or declaration; (3) a drawing of the invention; and (4) applicable fees.

Written Description

An inventor must include with his patent application a “specification,” which is a written description of his invention. This specification must contain the invention’s title (not brand or product name) and background, a brief description of the enclosed drawings (if necessary) and both summary and detailed descriptions of the invention.

The specification must also include a claims section, which is made up of descriptions of the invention’s key elements and major limitations. In other words, this section is where you lay “claim” to each piece of your invention. The more detailed and complete that your descriptions are, the broader your patent protection will be.

Oath or Declaration

Each applicant must also provide a notarized oath or declaration swearing that he or she believes that they are the original creator of the invention.

Drawings of the Invention

If an invention requires drawings to be understood, you must provide a detailed drawing of every element listed in the claims section and file those drawings with your application.

Fees

Each application must also include all applicable fees.

Multiple inventors who work together on an invention can file a patent application together and label themselves “joint inventors.” This will not affect their ability to patent their invention. Ultimately, each inventor will have a full and independent right to stop others from making, selling or using the invention.

You may use your own attorney to file a utility patent. However, if you purchase a full patent through My Patent Guys, it is recommended you use My Patent Guys to file your full patent application. 

A utility patent is a protection given by the US government to a new and useful process or thing or to an improvement on an existing invention. It allows the holder to prevent anyone else from making, using, selling or importing an invention for 20 years.

A Provisional Application for Patent is far easier and less expensive to file than a non-provisional Utility Patent Application. Although Provisional Applications receive almost no scrutiny at the time of their filing, they will be reviewed at the time a corresponding Non-Provisional Patent Application is filed, so applicants filing Provisional Applications should take care to disclose the “best mode” and meet the “enablement” requirement and establish novelty. A Provisional Application provides temporary and limited protection for the inventor of the covered item. Filing a Provisional Application establishes an early filing date for your corresponding Non-Provisional Patent Application. In contrast, a Non-Provisional Patent Application is an application for the grant of a full patent, which, if issued, will provide complete patent protection for the applicant’s invention.

People file Provisional Applications to secure the earliest possible start date for patent protection. An inventor who files a Provisional Application can use the term “patent pending” in connection with his or her invention if he or she intends to later file a full patent application. That inventor must file his or her corresponding Non-Provisional Patent Application within 12 months of the date the Provisional Application was filed. If the patent is granted, the patent’s filing date will be the same as for the provisional application, effectively protecting the invention for a total of 21 years.

You are not legally required to file for a provisional patent before filing for a full patent. However, White + Quinn, the law firm with which we have partnered, can provide a flat rate system primarily because of the initial provisional patent filing. This system works to your benefit as well: by filing for a provisional patent, you make sure that your patent protection begins as early as possible.

Although inventors generally understand that they should patent their work, most do not understand why. The main reason to file for protection is that a utility patent gives an inventor a limited monopoly – it grants him or her the right to prevent anyone else from making, selling or using the invention without the inventor’s consent. If someone makes, sells or uses the patented item without permission, a patent holder can bring an infringement lawsuit and often collect significant damages.

Filing a patent application provides the USPTO with relatively strong proof of your design’s conception and practice date. However, it’s always a good idea to maintain records of how you developed your design, in the event that another party later claims to have invented it first. A notebook with detailed notes and signed, dated witness entries that are organized chronologically is one common way to record the research and development process of your design.

While not required since the USPTO conducts one as part of the application examination process, it’s always a good idea to conduct a design patent search on your own, prior to filing your application. (The USPTO does require that you conduct your own search if you request expedited processing of your application.) Because a design patent application’s “description” is typically represented in its drawings, keyword searches are typically less effective at finding previously patented designs.

My Patent Guys offers a comprehensive patent search service with results that cover relevant prior art in your field of invention.

The term of a design patent is 14 years, measured from the date the patent is granted. This is in contrast to a utility patent term, which typically lasts 20 years and is measured from the application priority filing date. Design patents are not renewable and require no maintenance fees.

A design patent protects any new and original ornamental design of an article of manufacture. A trademark protects a word or words, name, symbol or drawing that is used in commerce to distinguish one source of goods or services from another.

Put another way, a design patent would protect the physical appearance of a unique lamp you are planning to sell to the public (so long as that appearance does not affect the lamp’s function in any way). A trademark would protect the symbols or words you use to identify the lamp as coming from your particular business. In certain circumstances, both forms of protection may be available to cover a single design, providing potential advantages for the owner of these rights.

It is important that you plan ahead when completing your design patent application. Allow at least 2-3 weeks complete the patent process, as it will take some time to prepare your technical drawings and application.

The “USPTO,” sometimes shortened to “PTO” or simply “Patent Office,” is another name for the U.S. Patent & Trademark Office. This office is the governing authority for granting patents and trademarks in the United States.