Provisional Application

Contents — Required

• (1) a written description of the invention sufficient to enable a person skilled in the art to make and use the invention (the § 112(a) written description and enablement standard applies)
• (2) drawings if necessary to understand the invention

Contents — not Required

• Formal patent claims (unlike non-provisional applications, provisionals do not require claims)
• Oath or declaration
• Prior art information statement

What it is not

• A provisional is NOT examined by the USPTO
• It does NOT become a patent
• It does NOT publish automatically
• It does NOT grant any patent rights
• It simply establishes a date in the USPTO's records

Term

• 12 months from the provisional filing date
• After 12 months, the provisional automatically expires and CANNOT be revived or extended
• The 12-month period is a statutory bar — there are no extensions

After Filing

• The inventor receives a filing date and a serial number
• The application is stamped 'patent pending'
• The inventor has 12 months to file a non-provisional (or PCT application claiming the provisional's priority)

AIA Grace Period Interaction

• The provisional filing date starts the effective filing date clock
• The AIA's § 102(b)(1) grace period protects the inventor's own disclosures made within 1 year before the EFFECTIVE FILING DATE (= provisional date if properly supported)

Patent Term

• A provisional does NOT start the 20-year patent term clock
• The term begins from the non-provisional application's filing date
• An inventor can benefit from up to 12 extra months of patent protection compared to filing a non-provisional first

Example

• Provisional filed January 1, 2024
• Non-provisional filed December 31, 2024 (within 12 months)
• Non-provisional patent issues and expires December 31, 2044 (20 years from non-provisional date)
• BUT priority date for § 102 prior art analysis = January 1, 2024
• The 12 months of prosecution before filing the non-provisional are effectively 'free' in terms of patent term.

Underdisclosure — the Critical Risk

• A provisional only provides priority for subject matter that is DISCLOSED in the provisional
• If a claim in the non-provisional application is not supported by the provisional's disclosure, that claim does NOT get the benefit of the provisional's priority date
• This can make the non-provisional claim vulnerable to prior art from between the provisional and non-provisional filing dates

Written Description Requirement

• 35 U.S.C. § 112(a) requires that the specification describe the invention to satisfy the written description and enablement requirements
• A 'quick provisional' that only describes one embodiment may not support broader claims filed 12 months later
• New Railhead Manufacturing v. Vermeer Manufacturing (Fed. Cir. 2002): provisional did not adequately describe a key limitation → non-provisional claim did not receive provisional priority → pre-provisional on-sale bar applied
• INADEQUATE PROVISIONAL = NO PRIORITY BENEFIT: if the provisional is merely a rough disclosure that doesn't satisfy § 112(a) for the claimed features, the non-provisional claims are treated as if no provisional was filed

Missing the 12-Month Deadline

• The 12-month deadline is absolute with no grace period
• If the non-provisional is not filed by the 12th month anniversary, the provisional expires and cannot be claimed as priority
• Note: a PCT application can be filed instead of a US non-provisional within 12 months

Publication Risk

• If the inventor publicly disclosed the invention before filing the provisional, the AIA grace period clock may be running
• Even with a provisional on file, if the grace period expires before filing the non-provisional, prior art from after the disclosure could apply to undisclosed claim features.

Minimum Legal Standard

• The provisional must satisfy § 112(a) written description and enablement for the subject matter being claimed in the eventual non-provisional
• The question is: for each feature claimed in the non-provisional, does the provisional specification adequately describe and enable that feature?

A 'Quick and Dirty' Provisional Fails

• Some practitioners file a minimal disclosure (a draft, an abstract, a conference paper) as a provisional
• This is risky if the eventual non-provisional claims features not fully described in the minimal provisional

When a Minimal Provisional is Acceptable

• If the inventor plans to claim only what is described in the minimal filing
• If the technology is simple and fully captured in the draft
• If there is no anticipated need to claim broader variations

Recommended Approach — as Detailed as Possible

• The ideal provisional includes: (1) a full description of the invention with all contemplated embodiments
• (2) drawings showing all important features
• (3) detailed description of all examples
• (4) discussion of how the invention differs from prior art
• (5) claims (optional but recommended) — which defines what the applicant considers the invention to be
• Including draft claims helps ensure the written description supports future non-provisional claims

Trade-off

• A more detailed provisional costs more to prepare but provides more robust priority protection
• A minimal provisional is cheaper but may not protect broader claims

Automatic Abandonment

• A provisional automatically becomes abandoned 12 months after its filing date
• There is no office action, no examination, and no notice — it simply expires
• The inventor does not need to take any action to abandon a provisional

Publication

• Provisionals are NOT automatically published by the USPTO
• They remain confidential unless: (a) the applicant files a non-provisional claiming priority to the provisional, and that non-provisional publishes at 18 months from the provisional date (which is effective the 18-month clock)
• (b) the applicant specifically requests publication
• (c) foreign applications claiming priority to the provisional publish in foreign offices

Confidentiality Benefit

• A provisional can be used to establish a priority date while keeping the invention confidential for up to 30 months (12 months to file non-provisional + 18 months until publication)
• This gives inventors time to evaluate commercial viability before public disclosure
• CONVERTING vs.

Filing New

• Converting a provisional to a non-provisional (via petition) costs the same as a new non-provisional filing fee
• The conversion starts the 20-year patent term from the conversion date (= provisional date + time of conversion)
• This is almost always less advantageous than filing a separate non-provisional claiming provisional priority

Multiple Provisionals

• An inventor can file multiple provisionals for related improvements
• A non-provisional can claim priority to multiple provisionals filed within the last 12 months, combining their disclosures into one non-provisional.