Filing a Provisional Patent Application

Provisional Patent Applications

A Provisional Patent Application is a relatively new form of intellectual property protection, which has only been available since about 1995. It is the FASTEST, CHEAPEST and EASIEST means for providing temporary protection for an invention and it does NOT require professional preparation.

What Does It Do? A Provisional Patent Application allows the inventor to mark the invention "Patent Pending" for a period of one year from the date the application is received by the Patent Office (Filing Date). There are no formal requirements for the written description or sketches and there is no examination. Therefore, you don't need to worry about whether or not your material is Provisional Patent Application CANNOT BECOME A PATENT and it expires one year from the filing date. IT CANNOT BE RENEWED. However, if a utility patent application is filed prior or to expiration of the Provisional Application, the invention would continue to be "Patent Pending" until a final determination is reached on the utility application.

Pros and Cons: Due to the Patent Office Secrecy Rules, no one can find out what type of application you have, when you filed or the subject matter of the application. Once the Provisional Patent Application is filed, the inventor can mark the device "Patent Pending", can tell manufacturers licensees or others that it is and can offer the device for sale. Therefore, a Provisional Patent Application appears to provide the same protection as a Utility Application. HOWEVER, the Provisional Application EXPIRES AFTER ONE YEAR, CANNOT BE RENEWED and CANNOT BECOME A PATENT! Therefore, if sales are successful and you want to extend your protection, or if you are negotiating for a sale or license of the invention and are getting to the point where you must show the other party what you have, you may want to file a Utility Patent Application in order to continue the protection and to have the possibility of actually obtaining a patent. Be sure to allow enough time for your patent attorney to prepare the new case. I suggest contacting your patent attorney when your provisional is about 8 months old.

Also, a Provisional Patent Application CAN be used to show the date of conception, but not for computing the term of a patent. Whether or not the filing of a Provisional Patent Application starts the one year period for filing foreign applications is the subject of much debate. However, until the matter, is resolved by the courts, it is safest to assume that it does.

Next you need a written description of your invention and a check for $100.00 payable to the Honorable Commissioner of Patents. When you mail this package to the Patent Office, you will be "patent pending" for one year from that date. If you wish, you can enclose a self-addressed post card, which the Patent Office will stamp and return, showing your serial number and filing date. Also,in about two months, they will send you an Official Filing Receipt.

However, you do not need to wait until you receive either of these. You are "Patent Pending" for one year from the date the Patent Office receives your application. When you mail your application to the Patent Office, I suggest that you mark your calendar for eight months down the road. During those eight months, you can market your device anywhere in the world and can make it "Patent Pending" and tell people that you are. DO NOT TELL THEM what type of application you have or the serial number or filing date of your application.

If they press you for that information, tell them that your patent attorney has advised you not to give out that information, and if they continue to press you, tell them to contact me and I will politely tell them that is is none of their business.

DO IT YOURSELF : TO FILE A PROVISIONAL PATENT

Since there is no examination of Provisional patent applications, you can safely file one yourself and save yourself some money. All you need is a Provisional Application Cover Sheet. You will need to begin with a Provisional Patent Application (printable) Cover Sheet: Click HERE for a PDF file that can be filled in right on your computer.

When the eight month date comes up, check on how you are doing with your invention and if you want to extend your protection beyond one year, it is necessary to consider filing Utility application, which CAN actually lead to a patent. I suggest the eight month date to ensure that you will have time for your patent attorney to draft an application and have you review it before you Provisional application expires. Actually, if you wish, you can have your attorney prepare the Utility Application at any time while your Provisional is in effect. Then, when your attorney tells you that the Utility application is ready for you to sign and send the Patent Office, you can hold it until, for example, the 364th day of your Provisional application and then mail the Utility application to the Patent Office by overnight mail. This will give you the maximum benefit of your Provisional application and will ensure continuity with your Utility application. As stated above, you can save money by filing the Provisional application yourself. However, if you would feel more comfortable having us do it, we will be happy to do so for $300.00, plus the government filing fee of $100.00. Call us at 818-225-1011 or write to:

Robert M. Sperry, Esq.
P.O. Box 8309
Calabasas, CA 91372


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