In 2011, President Obama signed the Americans Invent Act (AIA), which led to enormous changes in patent procedure and law. The changes were slowly implemented, but one of the most drastic changes was converting America's historic first-to-invent system into a first inventor to file system.
Under the new first-to-file system, priority for an invention is given to the first person that discloses the invention and files for an application first. As a result of these changes, filing a provisional patent application is more important than ever.
The Importance of a Provisional Patent Application
There is no such thing as a "provisional patent", but what an inventor files for is referred to as a provisional patent application. A provisional patent application should be filed as soon as the invention is tangible and can be described. Immediately upon filing the provisional patent application, the inventor can declare that they have "patent pending" on the invention.
When improvements are made to the invention, the inventor can choose to file another provisional patent or file a nonprovisional patent. It is important to note that new subject matter cannot be added to a nonprovisional patent. However, an inventor can wrap together multiple provisional patents when filing for the nonprovisional patent.
A provisional patent application is beneficial for inventors who are perfecting an invention because they are able to file for a provisional patent application for all aspects of their invention as they are developing them.
How to File a Provisional Patent Application
A provisional patent application can be filed without an attorney, but there are critical elements that must not be overlooked. Along with the filing fee, the application must include a cover letter that identifies the following:
- The application as a provisional application for patent
- The name of all inventors
- The residence of the inventors
- Title of the invention
- Name and registration of the attorney or agent (if applicable)
- Correspondence address
• If any U.S. agency has property interest in the application.
The application requires a written description of the invention and patent drawings to support the invention. In order for the provisional application to be useful in establishing priority when filing for the no provisional patent, it must accurately describe the invention. The saying "a picture is worth a thousand words" is especially relevant when filing for a patent. Drawings are crucial in the application because they can cover areas of the invention not included in the written disclosure.
Filing a provisional patent application is a good way to begin the patent process because it is inexpensive to prepare and file. Since there are no formal requirements for the provisional application, the main focus of the application is to disclose the invention in full detail.
After filing a provisional patent application, the inventor must file for a nonprovisional patent application within 12 months. The filing date of the nonprovisional patent will be the initial filing date of the provisional patent, which is advantageous for the inventor under the first-to-file system. A nonprovisional patent must be filed within the 12-month period, a deadline that cannot be extended for any reason.
When preparing to file the provisional patent application, it is important to disclose as much information as possible because an inventor will only receive the benefits of an earlier filing date with respect to what was previously disclosed.
Filing a patent can be a long and tedious process. However there are benefits to filing a provisional patent especially for inventors who are unsure if there is a demand for the product or inventors with a tight budget. Obtaining a provisional patent allows an inventor to continue to develop the invention and test the market before investing in a nonprovisional patent which are requires a great amount of time and resources.
A provisional patent application must be carefully prepared; otherwise, the provisional patent will not provide any benefits for the inventor and can create complications later in the patent application process.