Patent Law - Provisional Application, an effective measure to secure right for patent application under transition to first-to-file system.
As US patent law adopts first-to-file principle, provisional applications are expected to be used more frequently. A provisional application does not substitute a non-provisional application, and a non-provisional application must be filed within a specified period (1 year) from the filing date of a provisional application. However, a provisional application has may advantages.
The filing date of a provisional application is accepted as an official US filing date. That is, a patent application filing date is acknowledged whether an application is provisional or nonprovisional. Thus it prevents losing patent right due to delayed filing under a first-to-file system. A provisional application requires much less cost and time than a non-provisional application.
Preparation of a provisional application is fairly easy. For example, it is possible with only sketch and brief explanation of an invention. The explanation may be in any language. While filing a non-provisional application requires drafting detailed description and claims for the invention, and accompanying documents including inventor's declaration, filing a provisional application is immediately possible when a technical explanation of an invention is prepared.
A provisional application permits authorized use of “Patent Pending” notice. The notice notifies competitors that the invention implemented in the product is under procedure to obtain patent, and thus becomes important means to prevent copying and to secure competitive advantage.
The applicant has a period to assess the invention’s potential and to attract investment until a non-provisional application needs to be filed. Because the patent application filing date is secured as the date of filing the provisional application, the inventor can contact investors without concern for the invention being stolen.The inventor can decide whether to commit much higher cost for non-provisional application during the 1 year period.
Continuity of technical contents is required when a non-provisional application is filed based on a provisional application. Therefore, technical contents must be explained fully though certain legal formalities for a non-provisional application are not required. A provisional application is a separate procedure to obtain above-explained advantages easily in early stage, and it is not examined by PTO examiner. In order to obtain a patent, a non-provisional application must be filed within 1 year from the filing date of a provisional application, and examined.
Written by Chanmin Park, Patent Attorney