Understanding Provisional Patents

• A provisional application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional-application filing.

• Beware that an applicant whose invention is "in use" or "on sale" (1) in the United States during the one-year provisional application pendency period may lose more than the benefit of the provisional patent application filing date if the one-year provisional application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention (2).

• A claim (3) for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See (4).

• Independent inventors should fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.

Patent Laws References

1. Patent Law 35 U.S.C. §102(b)
2. Patent Law 35 U.S.C. §102(b)
3. Patent Law 35 U.S.C. 119(e)
4. Patent Rule 37 CFR 1.78

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