I’ve seen ads on the Internet for provisional patents for less than $200.00, and I’ve talked to inventors who want the early priority date under the US’s First to File rules without really understanding what is required in a provisional patent. I’ve tried to incorporate instructions from the USPTO as much as possible in this post.
From the site Provisional Application for Patent | USPTO, (United States Patent and Trademark Office)
“A filing date will be accorded to a provisional application only when it contains a written description of the invention, complying with all requirements of 35 U.S.C. §112(a).
Although the application will be accorded a filing date regardless of whether any drawings are submitted, applicants are advised to file with the application any drawings necessary for the understanding of the invention, complying with 35 U.S.C. 113. A drawing necessary to understand the invention cannot be introduced into an application after the filing date because of the prohibition against new matter. Further, 37 CFR 1.53(c) prohibits amendments from being filed in provisional applications which are not required to comply with the patent statute and all applicable regulations.”
- 35 U.S.C. 112 (a), which is the specification requirement for a utility patent states and is required in a provisional application states (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The provisional patent application then needs many of the same elements of the utility patent. With my patent work www.patentsbydondebelak.com I credit the $500 to $650 provisional patent cost for a micro-entity (income of less than $223,000) toward the cost of a utility patent, micro-entity fee for a utility patent is $2,200 to $2,600, because I feel it is not right to charge twice for the same work, as much of the provisional patent will be incorporated into the utility patent
“A filing date will be accorded to a provisional application only when it contains a written description of the invention, complying with all requirements of 35 U.S.C. §112(a).
But What’s the Catch
The patent office does not read or approve or evaluate a provisional patent before granting a provisional patent application number. So an inventor without meeting the standards of 35 U.S.C. 112 (a) may well receive a provisional application number. I’ve also not had the experience of the patent office checking the provisional patent application when a utility patent claims the priority date of the provisional patent. I could not find any data that tells what the official USPTO policy is on looking at provisional applications once a utility patent filed claiming a provisional patent priority date. I also do not believe that the USPTO is certifying, or validating a claim to a priority date when a granted utility patent states “claims the priority to (a provisional patent #). Again I could not find a specific reference to this point from the USPTO.
What this means to me is that yes the USPTO has requirements, but that it is not able to really check and approve provisional patents as meeting USPTO requirements in the same way it does for utility patents. Which this means to me is that the provisional patent may not truly be evaluated until there is a dispute regarding the utility patent, if it is even evaluated then.
What Should the Inventor Do
I’ve seen ads on the Internet for provisional patents for less than $200.00, and I’ve talked to inventors who want the early priority date under the US’s First to File rules without really understanding what is required in a provisional patent. I’ve tried to incorporate instructions from the USPTO as much as possible in this post.
From the site Provisional Application for Patent | USPTO, (United States Patent and Trademark Office)
Although the application will be accorded a filing date regardless of whether any drawings are submitted, applicants are advised to file with the application any drawings necessary for the understanding of the invention, complying with 35 U.S.C. 113. A drawing necessary to understand the invention cannot be introduced into an application after the filing date because of the prohibition against new matter. Further, 37 CFR 1.53(c) prohibits amendments from being filed in provisional applications which are not required to comply with the patent statute and all applicable regulations.”
My Comments
I believe the provisional patent is a great tool for inventor and I strive to follow the USPTO’s guidelines. But that doesn’t many everyone does. If the inventor wants to ensure his or her provisional application meets the USPTO guidelines they need to first quiz the provider about what they are going to put into their provisional patent and second they need to approve a draft of the application, checking the draft against the USPTO’s specification requirements for a provisional patent, before it is submitted. And if you are doing your own provisional patent, be sure to follow the USPTO’s guidelines of 35 U.S.C. 112 (a). This web site provides additional information on meeting that requirement PowerPoint Presentation (uspto.gov).
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