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A provisional application for patent is a U.S. national application for patent filed in the USPTO. It allows filing without a formal patent claim, oath or declaration. The focus is on describing the invention as completely as possible, and many formalistic requirements of a non-provisional patent application are unnecessary to satisfy. A provisional patent application also provides the means to establish an early effective filing date in a later-filed non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description of the invention.
A provisional patent application has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period can be extended only in extraordinary circumstances. Therefore, an applicant MUST file a non-provisional patent application claiming the priority of a provisional patent application within 12 months. If you miss the 12-month deadline you may in extraordinary cases get an extra 2 months to claim priority to the provisional.
A design patent is a form of the legal protection of the unique visual qualities of a manufactured item. A design patent may be granted if the product has a distinct configuration, distinct surface ornamentation, or both. In other words, a design patent provides protection for the ornamental design of something that has a practical utility.
In the United States, that means an item that is substantially similar to something that has the protection of a design patent may not be made, copied, used, or imported into the country.
Important: A design patent is valid for 14 years (if filed before May 13, 2015) after being awarded and is not renewable; if it was filed on or after May 13, 2015, the design patent has a 15-year term from the date of grant.
A utility patent is a patent that covers the creation of a new or improved—and useful—product, process, or machine. A utility patent, also known as a “patent for invention,” prohibits other individuals or companies from making, using, or selling the invention without authorization. When most people refer to a patent, they are most likely referring to a utility patent.
Utility patents are very valuable assets because they give inventors exclusive commercial rights to producing and utilizing the latest technology. In turn, utility patents are difficult to obtain. For one, they are hard to write, the process may be time-consuming and expensive to undertake, and their complexity may make them difficult to understand. But no worries, IIPLA will resolve all the patent application problems.
Important: Utility patents cover the creation of a new or improved—and useful—product, process, or machine and give its inventor exclusive commercial rights to it for 20 years.
Filing a Provisional Application or Non-Provisional Application for Patent creates a filing date for your invention. This filing date establishes the date of invention and protects you from other inventors who might claim to be the first ones to have come up with your invention.
The USPTO has established certain guidelines that an inventor should follow to describe his or her invention. These guidelines explain that an inventor must include:
(1) A title of no more than 500 characters;
(2) Clear instructions on how to make and use the invention (the “enablement” requirement);
(3) A summary of the invention;
(4) Drawings if necessary and an explanation of any enclosed drawings; and
(5) Claims about the patentability of the invention.
The descriptions in the application must be detailed enough to enable a person in the same field as the invention to make or use the invention using only those descriptions. (If the invention relies on any rare mineral or similar material for its creation or use, the applicant must deposit a sample of that material as well.)
The USPTO has very specific rules governing the appearance of technical drawings accompanying patent applications. Generally, the USPTO will require drawings in black ink. Color drawings are permitted only if necessitated by the invention and are typically not permitted with electronic filings.
Photographs are generally not considered an acceptable way to illustrate an invention. A photograph may only be used if drawings are insufficient, as in the case of molecular structures, for example.
The Non-Provisional Utility Patent process starts with the Step 1 of the patentability search and taking a decision on the further filing of the application. It takes approximately a week to complete step 1 and make a decision on filing a complete non-provisional application. The filing of the non-provisional application includes the preparation of your utility patent application (including the integration of drawings, claims, and all other necessary materials) and USPTO filing. Because of the complicated nature of Non-Provisional Utility Patent Applications, our affiliated patent firm will need at least 4 weeks to prepare and file such applications.
It may take two or more years for the USPTO to review your application and determine whether to issue the patent. An issued patent starts protecting your invention as of its filing date with the USPTO. If you have filed a Provisional Application for Patent relating to the same invention, and your Non-Provisional Utility Patent Application is filed within 12 months of your Provisional Application, your filing date will be the filing date of your Provisional Application.
Inventors seeking full patents must include four things in their applications: (1) a written description; (2) an oath or declaration; (3) a drawing of the invention; and (4) applicable fees.
(1) Written Description
An inventor must include with his patent application a “specification,” which is a written description of his invention. This specification must contain the invention’s title (not brand or product name) and background, a brief description of the enclosed drawings (if necessary) and both summary and detailed descriptions of the invention.
The specification must also include a claims section, which is made up of descriptions of the invention’s key elements and major limitations. In other words, this section is where you lay “claim” to each piece of your invention. The more detailed and complete that your descriptions are, the broader your patent protection will be.
(2) Oath or Declaration
Each applicant must also provide a notarized oath or declaration swearing that he or she believes that they are the original creator of the invention.
(3) Drawings of the Invention
If an invention requires drawings to be understood, you must provide a detailed drawing of every element listed in the claims section and file those drawings with your application.
Each application must also include all applicable fees.
A utility patent lasts for 20 years from the date the patent application was filed. If the inventor first files a Provisional Application for Patent and then has a corresponding Non-Provisional Utility Patent Application granted, his or her patent protection will last for 21 years from the date the Provisional Application was filed. IIPLA Team can assist you with a Provisional Application as well as a Non-Provisional Utility Patent Application.
A utility patent is a protection given by the US government to a new and useful process or thing or to an improvement on an existing invention. It allows the holder to prevent anyone else from making, using, selling or importing an invention for 20 years.
Because the marketplace for technology is constantly changing, you may not have much time to prove that your machine, process, or discovery is “new.” Given this fact, it’s important to file your application as soon as possible after your invention is complete, since the first person to file a provisional application or a full patent application will more often than not be considered the inventor. Note, too, that for an invention to be eligible for patent protection, a patent application must be filed within one year of (a) putting the patent on the market for sale and public use; (b) disclosing your invention to the public in almost any generally-available form; or (c) filing a Provisional Application for Patent.
The early filing of a patent application has other benefits as well – once the application is published, potential infringers are put on notice that an application is pending. If a patent is granted, the inventor may seek royalty payments from any person who made or used the invention during that pending period.
Although inventors generally understand that they should patent their work, most do not understand why. The main reason to file for protection is that a utility patent gives an inventor a limited monopoly – it grants him or her the right to prevent anyone else from making, selling or using the invention without the inventor’s consent. If someone makes, sells or uses the patented item without permission, a patent holder can bring an infringement lawsuit and often collect significant damages.
You are not legally required to file for a provisional patent before filing for a full patent. However, IIPLA can provide a flat rate system primarily because of the initial provisional patent filing. This system works to your benefit as well: by filing for a provisional patent, you make sure that your patent protection begins as early as possible.
Put simply, a design patent protects an article’s design –its unique external appearance– while a utility patent protects the article’s function. Utility patents also cover certain subject matter as to which a design patent would not apply (like processes and chemical compounds).
In some cases, an invention may qualify for both design and utility patent protection. Since each is a distinct form of protection, the inventor would need to apply for both types separately, to take advantage of both forms of protection.
If you’re ready to get a patent, IIPLA Team can help. We can help you complete the paperwork, file it with the USPTO, and get you in touch with a patent professional and independent attorney that can answer your questions about your patent.
The term of a design patent is 14 years, beginning on the date the patent is granted. This is in contrast to a utility patent term, which typically lasts 20 years and is measured from the application priority filing date. Design patents are not renewable and require no maintenance fees.
The process of preparing the application and technical drawings generally takes 2-3 weeks. Once the application is filed, you may legally label your design “patent pending” for the period that your application is awaiting approval.
Filing a patent application provides the USPTO with relatively strong proof of your design’s conception and practice date. However, it’s always a good idea to maintain records of how you developed your design, in the event that another party later claims to have invented it first. A notebook with detailed notes and signed, dated witness entries that are organized chronologically is one common way to record the research and development process of your design.
All patent applications must be filed in the name of the actual inventor(s). However, the owner of a design is often not the inventor. This occurs, for example, if the design was created as part of one’s employment or if it was simply sold or otherwise transferred to somebody else. If this is the case, the inventor(s) can file an Assignment with the USPTO either when the patent application is filed or anytime after that to inform the Office of this change in ownership rights. For additional information, contact the Assignment Branch of the USPTO at 1-800-786-9199 or 1-571-272-3350.
All patent application drawings require a sufficient number of views to constitute a complete disclosure of the subject of the application. For design patent applications, this may include any appropriate surface shading or broken lines to indicate non-design elements not claimed in the application. Drawings are usually required to be in black ink on white paper. However, black and white photographs may also suffice if adequate views are shown. Color drawings or photographs may only be submitted if a petition is filed and granted by the USPTO and an additional fee is paid.
The general guidelines for design patent application drawings are similar to those for utility patents. However, with design patent drawings only external features should be shown (nothing structural or internal) and no reference numbers are required.
No. The Patent Office has only authorized provisional applications as an initial filing for utility patents.
While not required since the USPTO conducts one as part of the application examination process, it’s always a good idea to conduct a design patent search on your own, prior to filing your application. (The USPTO does require that you conduct your own search if you request expedited processing of your application.) Because a design patent application’s “description” is typically represented in its drawings, keyword searches are typically less effective at finding previously patented designs.
IIPLA Services Network offers a comprehensive patent search service with results that cover relevant prior art in your field of invention.
No, only a single, distinct design may be the subject of each application. Likewise, your drawings should only reflect the views of one design. The entire design must be identified within a single claim and title. If you have several versions of your design you want to submit, you can attempt to include them but should be prepared for the possibility that the USPTO may choose to restrict your application to one version of your design and require additional applications for different versions.
The term of a design patent is 14 years, measured from the date the patent is granted. This is in contrast to a utility patent term, which typically lasts 20 years and is measured from the application priority filing date. Design patents are not renewable and require no maintenance fees.
A design patent protects any new and original ornamental design of an article of manufacture. A trademark protects a word or words, name, symbol or drawing that is used in commerce to distinguish one source of goods or services from another.
Put another way, a design patent would protect the physical appearance of a unique lamp you are planning to sell to the public (so long as that appearance does not affect the lamp’s function in any way). A trademark would protect the symbols or words you use to identify the lamp as coming from your particular business. In certain circumstances, both forms of protection may be available to cover a single design, providing potential advantages for the owner of these rights.
Any unique ornamental design of an article of manufacture (a useful item made by man or machine) may qualify for design patent protection. Generally, a design must satisfy the following to be patentable:
1. It is “part” of the article. That is, the design is intertwined and inseparable from the item.
2. It is purely ornamental. The design cannot be part of the item’s internal structure, nor may it be responsible for the article’s new or improved use. A good test is to ask, “Would the article work the same way if the design was removed or changed?” If the answer is no — that it would work differently (or not at all) — you more likely have a candidate for a utility patent.
The law also requires a patentable design to be “original” (cannot simulate a well-known or naturally-occurring object or person) as well as non-offensive to any race, religion, sex, ethnic group or nationality.
It is important that you plan ahead when completing your design patent application. Allow at least 2-3 weeks complete the patent process, as it will take some time to prepare your technical drawings and application.
The examiner makes sure the application complies with the necessary formalities. The drawing disclosure must be complete and the examiner will conduct a thorough comparison of the claimed design with any “prior art” (i.e., previously patented or published designs). The USPTO examiner may make amendment suggestions or otherwise communicate with you during this process. If the Patent Office finds the design patentable, the application is allowed. The USPTO will notify the applicant directly with instructions on completing the patent process.
A design patent owner has the right to exclude others from making, using, importing, selling or offering to sell without permission what is protected by the patent – in this case, your unique ornamental design. A patent holder’s rights include the right to file an infringement suit in federal court and to stop the importation of infringing goods into the US.
Once you file a design patent application, you may legally label your design “patent pending” for the period that your application is awaiting approval.
A Provisional Application for Patent must be filed with the USPTO. This entails completing a paper or electronic application, submitting accompanying illustrations, and complying with other USPTO guidelines. IIPLA Team can help make this process quick and easy. Once you place an order online, we complete and file your application (or do so along with our affiliate patent firm). IIPLA Team can even help you obtain top-quality technical illustrations.
A provisional application for patent lasts 12 months from its filing date. The USPTO will not grant extensions for any reason.
The inventor(s) must file a Non-Provisional Patent Application within that period to take advantage of the Provisional Application for Patent’s filing date. If not, the provisional application is declared abandoned and its filing date is lost.
Another Provisional Application for Patent or even a Non-Provisional Patent Application for the same invention can still be filed, just without the benefit of the earlier filing date.
An applicant who files a Provisional Application for Patent must file a corresponding Non-Provisional Patent Application within 12 months to benefit from the provisional filing date. The corresponding Non-Provisional Patent Application must specifically refer to the Provisional Application.
The USPTO will then compare the Non-Provisional Patent Application with the earlier-filed Provisional Application. If the subject matter of the descriptions is determined to be the same in both applications, the USPTO will grant the applicant the provisional application’s earlier filing date for any patent that issues.
Alternatively, an applicant can convert a Provisional Application for Patent to a Non-Provisional Application. This option saves the applicant little effort, however, and virtually no money. Furthermore, the Provisional Application’s filing date is lost and the filing date for any patent that issues will be the date of conversion.
Descriptions submitted with a provisional application for patent can be informal. This means they do not need to be in a standardized form. However, the USPTO strongly recommends submitting specific descriptions that adequately describe how to make and use your invention. This is because highly detailed descriptions make it easier for the USPTO to later associate your non-provisional patent application with your earlier-filed provisional application. If your Provisional Application for Patent fails to meet this requirement, your corresponding Non-Provisional Application may not receive the Provisional Application’s priority filing date.
On the other hand, with the shift from “first-to-invent” to “first-inventor-to-file,” you will want to file your provisional application as soon as possible. What’s most important is that you file a provisional application as soon as you have enough detail to prove that you filed first for the invention contained in your application. This way, you preserve the earliest possible filing date, at least for what is disclosed in your initial provisional application. Multiple provisional applications can be combined into a single, later-filed non-provisional application. Bear in mind that you must file the non-provisional application within 12 months of any provisional application to take advantage of that provisional filing date.
Drawings (illustrations) submitted with a provisional application can be informal. That is to say, they do not need to be in any standardized form. However, the USPTO strongly recommends submitting specific drawings that adequately depict your invention. This is because detailed illustrations make it easier for the USPTO to later associate a corresponding Non-Provisional Application you file with this earlier filed Provisional Application. Further, if drawings are necessary for someone skilled in the field of your invention to practice that invention, the drawings you include in your Provisional Application must be detailed enough to do so. If the drawings filed with your Provisional Application fail to meet this requirement, any corresponding Non-Provisional Application may not receive the Provisional Application’s priority filing date. IIPLA Team can also help you obtain professional top-quality illustrations.
A Provisional Application for Patent is a way to establish and protect a “date of invention” (or “priority filing date”) for one year. The Provisional Application for Patent was created to provide inventors with an inexpensive way to begin protecting their inventions. The Provisional Application for Patent gives you 12 months to prepare a full patent application during which you can label your invention “patent pending.” A Provisional Application for Patent lets you establish an early effective filing date for a patent without a formal patent claim, oath, declaration, or an information disclosure (prior art) statement. However, a Provisional Application for Patent must include a written description and drawings (if needed) sufficient to enable one skilled in the art in its field to practice the invention. The invention claimed in a Provisional Application for Patent must also be similar enough to that in any corresponding Non-Provisional Application for Patent for the Examining Attorney to determine that the two applications refer to the same invention. If either of these requirements is not met, the Provisional Application for Patent’s priority filing date will be lost.
A Provisional Application for Patent is a simple and inexpensive way to begin protecting your invention while you fully flesh it out, decide whether to pursue a full patent application and do any market testing you may need. Both a Provisional Application for Patent and a Non-Provisional Application for Patent applies to an invention that could ultimately become the subject of a utility patent. A Provisional Application secures a priority filing date if a Non-Provisional Patent Application for the same invention is filed within 12 months. Once a Provisional Application is filed, an inventor has exactly one year (if the invention hasn’t previously been publicly disclosed) to file the Non-Provisional Application for the same invention. If an inventor does not file a Non-Provisional Application within that timeframe, the Provisional Application for Patent is deemed abandoned. This means the inventor loses the right to that filing date and may even lose ownership rights to the invention if it was disclosed to the public more than a year ago. Filing a Provisional Application saves inventors costs upfront and allows them time to assess their invention’s commercial value. They can also conduct research and seek funding before committing to the cost and process of preparing a Non-Provisional Application.
A Non-Provisional Patent Application establishes an invention’s filing date (unless it claims the benefit of an earlier-filed application, such as a Provisional Application). Filing a Non-Provisional Application starts the official examination process with the USPTO to determine if the invention is patentable.
A provisional application for patent is a great first step towards protecting your invention. It establishes an early filing date for your invention while you put the finishing touches on it, finish your non-provisional patent application, seek funding, and do market research. Having a provisional application on file means that you can disclose details about your invention with everyone on notice that your invention is “Patent Pending.” (You can use the “Patent Pending” label for the entire duration of your 12-month provisional period, or for the entire examination period of your non-provisional utility application.) Also, provisional applications are not published by the USPTO so as not to compromise your invention’s secrecy.
Provisional applications are less expensive and easier to file than non-provisional patent applications, can be done quickly, and should be done in advance of an invention’s public disclosure, although following a disclosure is fine also. Most importantly, filing a provisional application establishes an official filing date with the USPTO, and now that the PTO has moved from “First-to-Invent” to “First-Inventor-to-File,” your filing date is the single most important determinant of who gets a patent.
With a provisional application on file, you can feel safe promoting your invention. Finally, if you significantly improve or change your invention after filing your provisional application, or decide not to go forward with a non-provisional application, the lower cost and turnaround time of a provisional application means that you haven’t gone through the more costly and difficult non-provisional process prematurely or unnecessarily. Finally, multiple provisional applications can be combined into a single, later-filed non-provisional application–if your first provisional application sufficiently details the invention that appears in your non-provisional application, you can get your earliest possible filing date for the entire invention!
A Provisional Application for Patent is considered complete and eligible for a filing date once the USPTO receives:
A Provisional Application for Patent is far easier and less expensive to file than a non-provisional Utility Patent Application. Although Provisional Applications receive almost no scrutiny at the time of their filing, they will be reviewed at the time a corresponding Non-Provisional Patent Application is filed, so applicants filing Provisional Applications should take care to disclose the “best mode” and meet the “enablement” requirement and establish novelty. A Provisional Application provides temporary and limited protection for the inventor of the covered item. Filing a Provisional Application establishes an early filing date for your corresponding Non-Provisional Patent Application. In contrast, a Non-Provisional Patent Application is an application for the grant of a full patent, which, if issued, will provide complete patent protection for the applicant’s invention.
People file Provisional Applications to secure the earliest possible start date for patent protection. An inventor who files a Provisional Application can use the term “patent pending” in connection with his or her invention if he or she intends to later file a full patent application. That inventor must file his or her corresponding Non-Provisional Patent Application within 12 months of the date the Provisional Application was filed. If the patent is granted, the patent’s filing date will be the same as for the provisional application, effectively protecting the invention for a total of 21 years.
A provisional Application for patent may be filed anytime after your invention is created – once you are able to fully describe how to make and use it. Some people wait to file a provisional application to delay the start of the 12-month clock. For example, you may want to file a provisional application before an event where you’d like to publicly present your invention with “patent pending” status.
Important note: If you’ve already disclosed your invention to the public (such as by sale, offer for sale, use in public or written publication), a provisional application may still be filed to establish a filing date, but you have exactly one year FROM THAT INITIAL DISCLOSURE to file your non-provisional application. Your disclosure starts the clock. In other words: a non-provisional patent application must be filed no later than one year after the public disclosure. Such disclosures include, but are not limited to: sales, offers for sale, written publication, disclosure to potential partners, or finding a source. Please contact the USPTO or an attorney if you’re unsure whether or not you fall into this category.
Particularly under the recently-enacted America Invents Act, filing a provisional application for patent as soon as possible is best. As soon as you can describe your invention in terms that will be recognizable to an examiner who later reviews your corresponding non-provisional application and has to determine whether the invention contained in both applications is the same, file your provisional application for maximum protection. If you need to file later provisional applications to make adjustments that fit within the original filing, you can always do this and then combine all your provisional applications into a final, corresponding non-provisional application. You can’t broaden the original invention in subsequent provisional applications, but you can clarify, explain, hone or narrow it. This gives you a lot of flexibility as to how to proceed while ensuring that you have the best protection possible while you’re putting the finishing touches on your invention.