A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied.
A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. §119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.
Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition under 37 CFR §1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.
However, converting a provisional application to a non-provisional application (versus filing a non-provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application.
By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.
The later-filed nonprovisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention. See 35 U.S.C. 112, 2nd paragraph. Although a claim is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later filed nonprovisional application in order to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed nonprovisional application. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. See 35 U.S.C. 112, 1st paragraph.