Posted By
Matthew Pavao

What is a provisional patent application?

Under US patent law, a provisional patent application (“provisional application”) is a document that is filed at the United States Patent and Trademark Office (USPTO) to establish an invention’s “priority date” – that is, to show that an applicant adequately possessed the invention described in the provisional application as of the provisional application’s filing date. To be most effective, a provisional application should describe the invention in enough detail for someone of ordinary skill in the art to make and use the invention without undue experimentation. A provisional application does not get examined by the USPTO, so it is the applicant’s responsibility to ensure that it adequately describes the invention. If the provisional application does not describe the invention thoroughly enough, then it may not be sufficient to establish a priority date for patent claims directed to the invention that are ultimately filed and examined in the US and/or abroad.

Why should I consider filing a provisional application?

A provisional application can be an expedient and relatively inexpensive way to establish a priority date for prospective worldwide patent rights covering an invention without affecting the term of those rights.

When should I consider filing a provisional application?

  • Before any public disclosure of the invention (e.g., a conference presentation, poster session, department seminar, paper publication and/or public announcement);
  • Before a meeting with sponsors, collaborators, competitors, and/or investors; and/or
  • When the inventors have reduced their invention to practice (or have a good plan for how to reduce their invention to practice), but plan to continue working on the invention over the next year.

What should a provisional patent application include?

A provisional application may include a variety of materials (e.g., text, figures, graphs, charts, and/or photographs) that describe the invention as well as how to make and use it. A provisional application should explicitly answer the following questions:

  1. What is the invention?
  2. How is the invention made?
  3. How is the invention used?

US patent law requires the provisional application to include comprehensive answers to these questions in order to establish a priority date for the invention. These legal requirements are called the “written description” and “enablement” requirements and they also apply to U.S. nonprovisional applications.

TIP: Ask the inventors for all materials that describe/support their work on the invention. These may include, by way of example, theses, manuscripts, “Supplementary Materials” sections of journal papers, computer code (preferably with comments), laboratory notebooks, emails, invention disclosure forms, and/or presentations.

TIP: Confirm that the invention being disclosed is actually new.

Should a provisional application include patent “claims”?

Legally, a granted patent claim defines the invention for which an applicant has enforceable rights (e.g., the right to prevent others from making, using, or selling the claimed subject matter without permission).  Claims are granted by the USPTO in nonprovisional applications, which are examined by patent examiners for utility, novelty, nonobviousness, as well as compliance with the written description and enablement requirements.

Provisional applications, on the other hand, are not examined, and thus there is no requirement to include claims. Nevertheless, including claims in a provisional application can provide several benefits. First, including claims the provisional application can provide the benefit of an earlier “priority date” for the later-filed nonprovisional application and the claims that will eventually be examined in the nonprovisional application. Second, considering claim scope early in the provisional application drafting process can be a useful exercise for shaping the legal definition of the invention. Third, the claim drafting process can emphasize the subject matter that should be described in detail in the specification of the provisional application in order to meet the “written description” and “enablement” requirements.

TIP: Including even a modest number of claims in a provisional application can help focus the drafting effort and may provide stronger priority benefits for any follow-on nonprovisional and/or foreign applications.

Who should be named as an inventor on a provisional application?

Under US law, an inventor is anyone who “contributes to the conception” (e.g., the complete mental embodiment) of at least one claim. In contrast, someone who has only reduced the inventive material to practice (without making any conceptual contribution) should not be named as an inventor. Inventorship is not necessarily the same as authorship of an academic paper.

Who owns the invention?

Under U.S. law, patent rights accrue to the inventors. However, most inventors are obligated to assign their patent rights to their employers by virtue of their employment agreements or institutional intellectual property policies.

Similarly, an inventor employed elsewhere, such as a contractor or collaborator, may be obligated to assign his or her patent rights to his or her employer.

Thus, if the provisional application names inventors from two entities who are each obligated to assign their rights to their respective entities, then both entities may have undivided ownership interest in the provisional application.

TIP: Because patent claims can inform the inventorship (and the ownership) of a provisional application, this is another good reason to include patent claims in a provisional application.

TIP: Obtain and record assignments from the inventors as soon as possible after a provisional application is filed. This ensures that the assignee is entitled to file continuing and PCT applications claiming priority to the provisional applications, grant licenses, etc.; and it also eliminates potential uncertainty regarding ownership that could arise in diligence or litigation.

Where was the invention made?

If the invention was invented in another country, it might be necessary to obtain a foreign filing license from the other country’s patent office before filing a U.S. provisional application. In some cases, it might be appropriate to file a patent application in the other country first, then file a U.S. nonprovisional application that claims priority to the foreign patent application.

In addition, if the invention was invented elsewhere (e.g., at another company or institution, either in the U.S. or abroad), another entity may have patent rights in the invention, for example, because its employees are inventors or because it provided facilities or services to the inventor(s).

TIP: For cases involving inventors from another entity, consider executing a license or joint research agreement with the other entity to reduce the risk of dispute regarding ownership and control of jointly developed intellectual property.

When do I have to “convert” my provisional application?

An applicant must “convert” the provisional application by filing a nonprovisional application and/or foreign patent applications within one year of the provisional application’s filing date. Of course, an applicant can always file a nonprovisional and/or foreign application before the one year anniversary of the provisional application’s filing date. Doing so will start the examination process sooner and will also begin the term of any patent that might issue from the nonprovisional and/or foreign application.

Can I file more than one provisional application for the same invention?

Yes. An applicant can file as many provisional applications as desired for a single invention during the one year “life span” of the first provisional application.

TIP: For on-going projects, it often makes sense to file multiple provisional applications, where each provisional application represents an additional advance and/or milestone. Doing so can provide the earliest possible priority date for each advance. The concepts disclosed in these multiple provisional applications can be filed in a nonprovisional and/or foreign patent application claiming priority to each provisional application prior to the first provisional application in the series expires.