What is a Provisional Patent Application? Part 3 of 3

Brought to you by the Denver Patent Law Firm: Trenner Law Firm, LLC

Although the provisional patent application process sounds simple, there are several “cautions” you can find listed on the United States Patent and Trademark Office website that you would need to pay attention to before filing. Here are some of the issues listed as per the USPTO site:

• Provisional applications for patent may not be filed for design inventions.
• Provisional applications are not examined on their merits.
• Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
• It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
• In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
• If there are multiple inventors, each inventor must be named in the application.
• All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
• The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
• A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
• There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
• Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
• No information disclosure statement may be filed in a provisional application.