Which patent application form is best for you?
Provisional and non-provisional applications, administered by the United States Patent and Trademark Office (USPTO), are two options for people who want to protect their inventions. The provisional application has a lower price making it the most economically attractive option for a first US patent application, while also providing parity between US and foreign applicants under the Round Agreements GATT Uruguay.
What does a provisional application do?
Filed with the USPTO under 35 USC §111(b), the provisional patent form is a US domestic application that allows applicants to file without “a formal patent claim, oath or declaration, or any disclosure statement of information (state of the art)”. The expedited nature of this type of patent form allows applicants to set an earlier effective filing date, which can be very helpful if they want to establish primacy later or file a non-provisional patent application under 35 USC §111( a) at a later date. date. It is the provisional patent form that allows applicants to use the phrase “patent pending” in conjunction with their invention (Source: “Provisional Patent Application”, United States Patent and Trademark Office, http://www.uspto .gov/patents/resources/types/provapp.jsp).
The processing of this application is valid for 12 months from the date the application was submitted. This pendency cannot be extended, it is important to point out. For this reason, an applicant filing this type of form must file a corresponding non-provisional application during the 12-month processing period if he does not wish to forfeit the earlier filing date of his provisional form. This application should, understandably, make specific reference to the provisional application.
An alternative to filing a corresponding non-provisional form is to convert the provisional application to a non-provisional one by filing an “allowable petition”. This must be done within the same 12-month period from the date of the first filing. The disadvantage of this method is that the term of the patent issued from such a conversion will start from the filing date of the original provisional form.
What does a non-provisional application do?
A patent is a kind of “fence” for an invention. It sets the boundaries for ownership and earnings from everything within the perimeters, just as property rights protect homeowners and businesses from trespass. For a limited time, the holder of a non-provisional patent is granted rights that exclude others from using, making, selling, offering to sell, or importing into the US the material defined in the patent.
There are three types of patents: utility, design, and plant (and two types of utility and plant patent applications: provisional and non-provisional). Of the more than 500,000 patent applications received each year, the majority are utility patents (Source: “Guide to Filing Non-Provisional (Utility) Patents”, United States Patent and Trademark Office, http: //www.uspto.gov/patents/resources /types/utility.jsp).
If you have questions about other types of patent forms, how to locate a patent attorney or agent, how to obtain the most current fee schedule, or obtain copies of other USPTO publications, contact the USPTO.
One important note to keep in mind is that having a patent does not mean that the USPTO will pursue and enforce infringement of that patent. It is up to the patent holder to enforce his patent rights and seek appropriate remedies in case his patent is invaded. Given the complex nature of the non-provisional application, the USPTO recommends that applicants consult with a registered patent attorney or agent, after reviewing their guidance.
Works Cited:
“Guide to Filing Non-Provisional (Utility) Patent Applications”, United States Patent and Trademark Office, http://www.uspto.gov/patents/resources/types/utility.jsp
“Provisional Patent Application”, United States Patent and Trademark Office, http://www.uspto.gov/patents/resources/types/provapp.jsp
