For many inventors, starting with a provisional application is the first step in obtaining patent rights. A provisional application allows an inventor to establish an early effective filing date at a low cost. It also allows the inventor to use the term “Patent Pending” in connection with the invention. A provisional application can remain pending for up to 12 months. This 12-month period cannot be extended. However, if a corresponding non-provisional application is filed after the 12-month mark and claims priority to the provisional application, the benefit of the provisional application may be restored as long as the filing of the non-provisional application is not more than 14 months after the filing date of the provisional.
Alternatively, a provisional can be converted into a non-provisional. The benefit being that, instead of having a non-provisional application fully prepared within the 12-month period, a request for conversion need only be made within the 12-month period. Nonetheless, it is much more prudent to file the non-provisional application and claim the benefit as opposed to conversion. This is because the term of a patent issued from a converted provisional application is measured from the original filing date of the provisional application instead of the filing date of the non-provisional. This could truncate a patent term by up to 12 months.
The filing requirements for a provisional application are not as extensive as for a non-provisional application. The provisional application must name all of the inventors and include a written description, cover sheet, filing fee, and any drawings necessary for the understanding of the invention. While filing new materials in a related non-provisional application is common, if the new materials are necessary for patentability but not filed in the related provisional application, they will likely be considered new subject matter and will be unable to claim the benefit of the provisional application’s earlier filing date.
While provisional applications can be converted into or used to support later filed utility and plant patents, they cannot be converted into or used to support a later filed design patent. Nonetheless, design information may still be submitted in a provisional application. Provisional applications are not examined on the merits, meaning an examiner will not evaluate them for meeting the patentability requirements. Further, provisional applications cannot claim the benefit of previously filed applications and the only amendment allowed after filing a provisional application is one which makes the application comply with applicable regulations. Therefore, it is to an applicant’s advantage to draft a comprehensive application so as not to run into any problems when filing a corresponding non-provisional application.
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