Provisional Patent Applications: Quickest Way to "Patent Pending"

Filing a provisional patent application guards against rip-offs while buying time to file a regular patent application.

Inventors know that inventions are often new solutions to old problems. An invention by Congress -- the provisional patent application -- is a good example. It provides an excellent solution to a nettlesome issue for independent inventors: how to show their brainchild to potential manufacturers without getting ripped off.

The Problem

Although most potential manufacturers can be trusted to play fair, few inventors wish to rely exclusively on trust when disclosing an invention. But for a variety of sensible reasons, most manufacturers are unwilling to sign binding nondisclosure agreements before even seeing an invention.

To resolve this standoff, inventors have traditionally used two approaches to protecting their invention when disclosing it to potential manufacturers.

Some build and test an invention before arranging a show-and-tell session with a potential manufacturer. If they have carefully documented the building and testing process, they can later disprove the manufacturer's claim to be the true inventor if a ripoff is attempted.

Or, an inventor may file a patent application and mark the invention with a "patent pending" label before shopping it around. Few manufacturers will risk ripping off an invention if they realize they may later be hit with a patent infringement lawsuit if the patent is ultimately issued.

Unfortunately, both of these approaches are increasingly flawed. As technologies become more complex -- biotechnology, nanotechnology and software development come to mind -- independent inventors find it harder to build and test inventions based on them. And filing a regular patent application is a lot of work and can be very expensive if an attorney is used.

The Solution

Congress gives inventors a third approach: File a provisional patent application (PPA) on the invention. Filing a PPA allows an inventor to claim "patent pending" status for the invention for 12 months, but involves only a small fraction of the work and cost of a regular patent application. All that is required to file a PPA is an $80 fee ($160 for large companies) and:

• a detailed description of the invention telling how to make and use it (the legal standards for the description are the same as those for a regular patent application),
• informal drawing(s), if they are needed to understand how to make and use the invention, and
• a one-page cover sheet.

If you have written a technical paper for a journal, you can submit it as the description of the invention, as long as it meets the legal standards for describing how to make and use the invention.

Because the PPA is considered a legal substitute for building and testing the invention (which is called "actually reducing the invention to practice") and is not intended to be a regular patent application, you don't need to include:

• an abstract or summary
• patent claims
• a Patent Application Declaration (a statement under penalty of perjury that you are the true inventor and have disclosed all information you know that would be relevant to the examination of the application), or
• an Information Disclosure Statement (disclosure of all relevant prior art known to you).

After You File a PPA

If you file a PPA so that you can claim patent pending status, but then decide not to follow up with a regular patent application, your PPA will be thrown away after one year. You can still file a regular patent application later, but you won't be able to get any benefit from the earlier PPA filing date.

If you file a regular patent application within one year of filing the PPA, you can claim the PPA's filing date and can rely on its date if necessary. Two reasons you may wish to claim the earlier filing date on your invention are:

• You want to rely on the PPA filing date to prove that your invention came before other similar developments (called "prior art") that would block your claim to invention.
• A competing patent application claiming the same invention was filed after your PPA but before your regular patent application and the U.S. Patent and Trademark Office (USPTO) has declared an "interference."

Your regular patent application may include any new matter (technical information about the invention) that wasn't in the PPA, but you won't be able to rely on the PPA's filing date for any such new matter.

For more guidance on preparing a provisional patent application, consult Nolo's book Patent Pending in 24 Hours, by attorneys Richard Stim and David Pressman (Nolo).

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