Before June 8, 1995 in the United States, patent applications were required to meet all legal requirements and also meet all the administrative rules and regulations of the U.S. Patent and Trademark Office (PTO) when filed. The reason is that once filed, patent applications are automatically examined, sometimes very promptly. Therefore, an applicant needed to rely on a patent lawyer to prepare and file every application.
Most foreign countries have a different approach which is designed to allow inventors to protect their rights and enter into the patenting process without high cost and delay. In those countries, a preliminary or "provisional" patent application may be filed. This advantage has now been incorporated into our law.
This kind of application is simplified in that many formalities are not required. All that is needed is a technical explanation of the invention. The explanation or "disclosure" of the invention must be complete enough to enable a person skilled in that particular field to be able to understand how to make and use the invention without having to resort to experimentation to do so.
The benefits of this option are obvious. An inventor should be able to prepare and file the application with a minimum of assistance. If an attorney's advice is needed, the time and expense will be modest. Also, the PTO filing fee has been reduced seventy-five dollars for independent inventors and small businesses and $150 for other organizations. In addition to the low cost, the provisional application can be completed and then filed quickly.
What makes provisional applications possible is that they are not examined. All a patent office does is date stamp and log them in and file them away. However, the inventor has gained a filing date, an essential critical achievement for the protection of rights in the U.S. and every foreign country. The inventor has also gained time to continue work on developing the invention, to seek funding to move the invention forward towards commercialization, or to commercialize the invention.
An inventor who files a provisional application has one year to file an application that does meet current legal requirements and administrative formalities. When a complete application is filed, a full filing fee will be required. The PTO will then proceed to examine the application. Of course, the provisional application can be abandoned and another provisional filed on the same or an improved invention. In such a case, the applicant would lose the early filing date and only be entitled to the benefit of the filing date of the provisional application which finally matures into the application examined. There is no limit to the number of provisional applications which an inventor can file on an invention or development. One or more provisional applications can be used for a complete application so long as the full application is filed within one year of the filing of the earliest provisional application on which the inventor seeks to rely.
A final word about how the benefits of the provisional filing system are strengthened by also having the first-to-file priority rule. Many independent and small business inventors fear disclosing their inventions before a patent is granted lest an unscrupulous person steal the idea and file a patent application in their own name. But filing is often delayed while the invention is being perfected to avoid premature filing. A first-to-file priority rule together with a provisional filing option successfully addresses both concerns. An inventor, for very little cost, can quickly "stake a claim" on his or her invention. If anyone files later on the same invention, regardless of whether the second filer is an inventor or a thief, the first inventor to file is in a unchallengeable position.
