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A provisional patent application allows the applicant to claim a priority date to what is described in the provisional patent application. The priority date means – the date on which a certain invention was disclosed – and that disclosure can be used as evidence that the inventor has patent rights over another to that disclosed invention. The US patent system is based on a “first to file” system – or in other words, whoever has the earliest priority date to an invention will have rights to the patent.
After a provisional patent application is submitted the applicant has 12 months to submit a nonprovisional patent application related to what was disclosed in the provisional patent application – otherwise future patent rights for what was disclosed in the provisional patent application will be lost.
The disclosure in the provisional patent – can be simple – but ideally it will cover everything that is described in the first main part of a nonprovisional application – the description (a detailed written description and drawings). A full description is critical in the provisional application because a priority date will only be given to what was included in the provisional application.
By filing a provisional patent application the applicant can use the term “Patent Pending” for the invention. The applicant also has the peace of mind that a priority date is gained for whatever was disclosed in the provisional application – so if another person applies for patent rights for the same invention the provisional application can be used as evidence of a sooner filing for patent rights – and therefore being the “first to file.” This takes the risk away from a public disclose – by the inventor – of the invention – although only what is in the provisional application will gain a priority date and be protected. Therefore a complete description in the provisional patent application is very important (this is repeated from the last paragraph for emphasis).
If a provisional application is filed, and there are no other applications connected to that provisional application, then a provisional patent application is not public and is not published.
If a nonprovisional application is filed which claims the benefit – or is converted from a provisional application – then the provisional application will be public because the nonprovisional application will be published 18 months after the filing date of the provisional application (priority date of the nonprovisional application). The nonprovisional application identifies the provisional application in the nonprovisional application – and any application identified in a published application will also become public.
Although there are some instances when a nonprovisional application will not be published – such as – (a) if there is a request for non-publication and the patent has not been issued yet – or (b) if the nonprovisional application was abandoned before publication.
A provisional patent application will not mature into a provisional patent. Stated another way, a provisional patent application on its own with never give the applicant patent rights. A provisional patent application serves the purpose of gaining a priority date for an invention – without the requirement of submitting the second part of the nonprovisional application – the second part being the claims. A nonprovisional patent application needs to be submitted after the provisional patent application for patent rights to be eventually gained (there are more steps other than the initial nonprovisional application to fully gain rights). The reasoning behind why some applicants take the additional step of submitting a provisional application before a nonprovisional application is that a provisional application is a way to gain a priority date – with the reduced cost of not having to spend the time on writing claims – while gaining 12 months to test the market – meaning, making public disclosures of their invention and determining if it will make money.
Further information about the patent process and strategy: Nonprovisional Patent Applications Versus Provisional Patent Applications - when and why to use either application.
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