The United States Patent and Trademark Office (“USPTO”) offers inventor the option to file a provisional patent application which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.
A provisional patent application (“PPA”) if filed under 35 U.S.C. §111(b). A PPA does not require a claim, or an oath or declaration, and should not include any information disclosure (prior art) statement. A PPA is a means for establishing an early effective filing date in a later filed nonprovisional patent application filed under 35 U.S.C. §111(a). Once filed you can now put the term “Patent Pending” in the description of the invention.
A PPA last 12 months from the date it was filed. The 12 month period cannot be extended. Therefore, an applicant must file a corresponding nonprovisional application. “However, a nonprovisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition (including a statement that the delay in filing the nonprovisional application was unintentional and the required petition fee) to restore the benefit under 37 CFR 1.78.”
According to 35 U.S.C. §119(e), the corresponding nonprovisional application must have or be amended to contain a specific reference to the PPA. For a nonprovisional applications filed on or after September 16, 2012, the specific reference must be included in an Application Data Sheet (“ADS”). Further, there must be a claim under 35 U.S.C. §119(e) for the benefit of a PPA.
The relevant statute that defines this requirement is 35 U.S.C 111(b), which says:
(b) PROVISIONAL APPLICATION.-
(1) AUTHORIZATION. A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include-
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
A complete nonprovisional patent application must contain all the following elements:
A Utility Patent Application Transmittal Form or Transmittal Letter
The Fee Transmittal Form and the Required Fees
The Application Data Sheet
A Specification, with at least one claim
Drawings, when necessary
A Declaration or Oath by the Inventor
When it’s necessary, an Amino Acid Sequence Listing
There are elements that must be presented when filing a nonprovisional patent application, for example, the size of the paper or PDF submitted to the USPTO must either be 8 ½ by 11 inches or DIN size A4. The USPTO provides detailed information as to how to provide these elements for a complete and valid non-provisional utility patent application.