What’s the News on Patent Reform?  The first-inventor-to-file provision converts the United States patent system from a “first to invent” system to a first inventor to file system. The first-inventor-to-file provision, which takes effect March 16, 2013, also alters the scope of available prior art to apply against a claimed invention in determining the novelty and obviousness of the claimed invention.

New Filing Guide! The USPTO has issued a new Nonprovisional (Utility) Patent Application Filing Guide that incorporates and strongly encourages electronic filing. (The USPTO now charges substantially more for applications submitted on paper.)

What are the differences between a Provisional Patent Application and a Nonprovisional Patent Application?

Provisional

Nonprovisional

Purpose

A USPTO Provisional Patent Application is designed to provide a lower-cost first patent filing in the United States for a utility patent. Under the provisions of 35 U.S.C. § 119(e), the resulting corresponding non-provisional utility application (if later filed separately within 12 months) would benefit in three ways:

(1) patentability would be evaluated as though filed on the earlier provisional application filing date,

(See Patentability Evaluation)

(2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and

(3) the twenty-year patent term would be measured from the later non-provisional application filing date.

The purpose of a nonprovisional patent application is to provide a tool for seeking the protection of inventions. Since not all patent applications issue into patents, it is not a guaranteed process for protection. By protecting intellectual endeavors and encouraging technological progress, the USPTO seeks to preserve the United States’ technological edge, a key to current and future competitiveness.

An issued enforceable patent is a type of property right. It gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the United States the subject matter that is within the scope of protection granted by the patent. The patent does not give the right to make, use, offer for sale, sell or import the patent, only the right to exclude.

The role of the USPTO is to grant patents for the protection of inventions. The USPTO determines whether a patent should be granted in a particular case.

U.S. patent grants are effective only within the United States, U.S. territories, and U.S. Possessions during its term, subject to payment of maintenance fees.

Sources: Nonprovisional (Utility) Patent Application Filing Guide

Minimum content to receive a filing date

A provisional patent application must include, at a minimum to receive a filing date:   

* A written description of the invention, complying with all requirements of 35 U.S.C. §112 1st paragraph--MUST ADEQUATELY SUPPORT the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date; and

   * Any drawings necessary to understand the invention, complying with 35 U.S.C. §113.

If either of these items are missing or incomplete, no filing date will be accorded to the provisional application.

A nonprovisional utility patent application must include, at a minimum to receive a filing date:

* A specification (written description of the invention complying with all requirements of 35 U.S.C. §112 1st paragraph),

* Including a claim or claims;

* Including drawings necessary to understand the invention, complying with 35 U.S.C. §113.

In order to be complete, these are also required:

* An oath or declaration; and

* The prescribed filing, search, and examination fees.

These latter items may be provided at a later date but the application is incomplete without these and will be abandoned after a period of time. A surcharge applies for filing these late.

Minimum content to be complete

Must contain:

* The current filing fee;

* A cover sheet (PTO/SB/16 may be used, available from USPTO forms);

   * The application (specification/written description and drawings) as a provisional application for patent;

   * The name(s) of all inventors;

   * Inventor residence(s);

   * Title of the invention;

   * Name and registration number of attorney or agent and docket number (if applicable);

   * Correspondence address; and

   * Any US Government agency that has a property interest in the application.

 Must contain:

    * The prescribed filing, search, and examination fees.

    * Utility Patent Application Transmittal Form or Transmittal Letter (This is self-generated in an electronic application)

   * Fee Transmittal Form and Appropriate Fees (This is self-generated in an electronic application)

   * Specification (with at least one claim);

   * Drawings (when necessary);

   * Executed Oath or Declaration;

   * Nucleotide and/or Amino Acid Sequence Listing (when necessary).

May contain:

* Application Data Sheet (see 37 CFR § 1.76) which contains:

* The name(s) of all inventors;

* Inventor residence(s);

* Title of the invention;

* Name and registration number of attorney or agent and docket number (if applicable);

* Correspondence address;

* Any US Government agency that has a property interest in the application;

* Domestic priority information;

* Foreign priority information and assignment information; (See 37 CFR § 1.76.)

Number of Claims

Claims are not required in a provisional application. However, the written description and any drawing(s) of the provisional application MUST ADEQUATELY SUPPORT the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date.

The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable (clearly understood ) by reference to the description. (See 37 CFR § 1.58(a)).

Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent).

Term

Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date.

The patent grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application (but not a provisional patent application) from the date on which the earliest such application was filed.

Patent term adjustments may be available if the patent took longer than 3 years to issue and the applicant was not the cause of the delay(s).

USPTO filing fees

See USPTO Fee Schedule

See USPTO Fee Schedule & What is a Small Entity for Patent Purposes

CAUTIONS from USPTO

(printout of USPTO caution)

WARNINGS from USPTO

(printout of USPTO warning)

FEATURES  OF PROVISIONAL PATENT APPLICATIONS

[extracted from USPTO Guide]

 *  Inventors may use the initial 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 potentially earlier U.S. patent application filing date for the invention than non-provisional patent application;

   * Permits 12 month authorization to use "Patent Pending" notice in connection with the description of the invention (See Provisional Rights for more information on “Patent Pending”);

   * 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);

   * 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 35 USC §111(a) non-provisional application for patent (see PCT Patent Application and Unity of Invention); and

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

EXAMPLES  OF PROVISIONAL PATENT APPLICATIONS

Note: These provisional patent applications are arbitrarily extracted from WIPO.int PatentScope® searches. The USPTO does not publish provisional patent applications. They are not typical provisional patent applications just by the fact that they were not abandoned. Most provisional patent applications submitted to the USPTO are abandoned and are not claimed for the benefit of any nonprovisional patent application. Some of these provisional patent applications have claims (which are not required in a provisional patent application). These applications were not examined and may or may not sufficiently disclose the subsequent nonprovisional patent application subject. You can follow their prosecution histories at WIPO.int PatentScope® if you are curious to see what happened to them after submission.

Butter Related Food Product and Method

The Pet Butler

Twist-Up Candle Container With LED Light Cover and Method of Use

Hands Free Operation Adhesive Tape Dispenser

[Synthetic Turf with] Shock Absorption Layer

Method For Deriving A Wellness Related Index For A Food Composition

MISCONCEPTIONS-PROVISIONAL PATENT APPLICATIONS

*  Misconception: That an idea or concept can be the subject of a provisional patent.

Answer: False. The written specification must be adequate to support a nonprovisional application if the provisional application is going to be used to establish a priority date. For the super majority of provisional patent applications that are not used to establish priority, the applications are never examined and are disposed of after a period of time.

*  Misconception: That a provisional patent application is a secret forever.

Answer: False. Once a provisional patent application has been used to achieve a priority date for a later-filed nonprovisional patent application, anyone can request a copy of the provisional patent application. See MPEP 711.04 Public Access to Abandoned Applications for more information.

For the super majority of provisional patent applications that are not used to establish priority, the applications are never examined and are disposed of after a period of time.

TO CONVERT OR NOT TO CONVERT?

What is allowed under the applicable patent statute?

37 CFR 1.53(c)(2)

An application for patent filed under paragraph (b) of this section [nonprovisional patent application] may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:

(i) Abandonment of the application filed under paragraph (b) of this section;

(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;

(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or

(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.

37 CFR 1.53(c)(3)

A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph).

Why convert from a nonprovisional patent application to a provisional patent application (under 37 CFR 1.53(c)(2))? If the inventor finds a reason not to pursue the original nonprovisional patent application. One presumption would be that the claims are no longer desirable and the conversion would give the invention new claims. A quick search of USPTO issued patents shows this was used very few times. A few of the issued patents where it was used can be viewed at the USPTO:  7366333  7155415  6685928  5993132  5943211. A patent application where conversion from nonprovisional to provisional was used can be viewed at the USPTO: 20070005154

Why convert from a provisional patent application and lose up to a year of patent term rather than claim the benefit? Good question. ?? A quick search of USPTO issued patents shows this was used very very few times.One example issued patent can be viewed at the USPTO: 6241604. An example of an application can be viewed at the USPTO: 20080027928.

Are a ‘Non-Provisional’ Patent Application and a ‘Nonprovisional’ Patent Application (no dash) the same?

The terms are used interchangeably. Revision 7 of the Eighth Edition of the Manual of Patent Examining Procedure (MPEP), dated July 2008, uses ‘non-provisional’ approximately 10 times and ‘nonprovisional’ approximately 686 times. Title 35 of the United States Code (which is contained in the MPEP) uses

‘non-provisional’ 0 times. The uses are much more interchangeable on the USPTO web site at USPTO.gov where ‘non-provisional’ appears approximately 1/10 as many times as ‘nonprovisional.’

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