Posts Tagged ‘provisional’

Time Keeps On Ticking: Review of Statutory Time Requirements for Patent Applications

March 11, 2010

By Stephen T. Scherrer, Registered U.S. Patent Attorney

“To achieve great things, two things are needed; a plan, and not quite enough time.” -Leonard Bernstein

You have the first part of the above quote: a “plan” – and by this I mean an invention – a product or process that you know will sell well. But, you are concerned that your invention will be so wildly successful that others will copy the product to line their own pockets. Therefore, you are rightly interested in patent protection. However, it is the second part of the above quote that trips up inventors: time. The U.S. Patent Office and international patenting bodies have very strict rules about time – such as time limits for filing U.S. provisional and non-provisional applications, international applications and the like. This article is meant to shed a little light on some of these time limits, and provide some tips on how to avoid getting caught in the trap of running out of time. It is my experience that these somewhat complex and confusing time rules are simply not known or understood well by inventors.

One Year Statutory Bar – Applications must be filed within 1 year of public disclosure or offer for sale

Recently, a local business owner spoke to me about the possibility of obtaining patent protection for a product. Upon further investigation, I learned that this company had been selling this product in the United States for about two years. Unfortunately, I could not help him prepare and file a U.S. patent application because patent protection is barred by the “one year statutory bar.” In essence, the one year statutory bar means that patent applications in the U.S. must be filed within 1 year of a public disclosure or an offer for sale of the invention or the invention is barred from obtaining patent protection.

Because he had been selling his invention for about two years, his product would operate as “prior art” against his patent application. Since the product he had sold for two years was identical to what he was attempting to patent , the Patent Office would not grant patent protection for his invention, and any application would be a waste of money and time for the inventor.

It is extremely important to understand that the clock starts to tick the day you publicly disclose your invention or offer your invention for sale. You can protect yourself against public disclosure by ensuring that anyone you speak to about your invention signs a non-disclosure agreement. However, even a non-disclosure agreement will not protect you from starting the time limit triggered by an offer for sale.

But the United States is unique in granting even the 1 year time limit for filing after a public disclosure. Most other countries no ability to file applications once publicly disclosed. For example, if you are interested in obtaining protection in Europe, you will be barred from obtaining a patent the moment you publicly disclose or start selling the invention publicly unless you file an application first. I typically recommend filing an application prior to any public disclosure to protect international filings.

But it is not necessary to file an international application immediately. You can claim priority to an earlier filed application in a first country and not be subject to the bar as long as you file the application in the first country before public disclosure of the invention, and then as long as you file your application in the second country within 1 year of the filing in the first country – the so-called “Paris Convention.”

“Paris Convention” – Applications in other countries must be filed within 1 year of priority

Most countries are subject to the “Paris Convention”, which specifies, as noted above, that a patent application filed in a second country may claim priority to an application in a first country if the application in the second country is filed within one year of the application in the first country. In essence, the application filed in the second country can “piggyback” on the filing in the first country.

For example, you first file an application in the United States. You may then file in most other countries and claim priority to the U.S. application if within one year. One way to save money, at least initially, is to file a PCT application , which allows a filer to file and pay the fees for only a single international application that designates most other countries around the world. The filer would be able to defer the fees for the countries of interest for 30 months after the priority date of the U.S. application.

Provisional Application Conversion – Non-provisional applications must be filed within 1 year

Another time limit that inventors should be aware of is the one-year time limit to convert a U.S. provisional patent application into a non-provisional application. For various reasons, an inventor may be interested in initially filing a provisional patent application (perhaps because it can be less expensive than a non-provisional application to file and provides some time to find out if there is a market for the product). However, a provisional application only provides a priority date but is not examined by the U.S. Patent Office. To get examined, one must convert the application to a non-provisional application within 1 year. In addition, foreign filings under the Paris Convention may claim priority to a U.S. provisional application.


So how do all of these time limits work in real-life scenarios? I have provided a couple of examples below that hopefully clarify how an inventor may be subject to the time requirements.

Example 1

An inventor invents a product and publicly discloses the product on January 1, 2009. The inventor will need to ensure that a U.S. patent application is filed on or before January 1, 2010 or the invention will be barred from patent protection in the United States. So on December 31, 2009, he or she files a U.S. provisional patent application for the invention. Again, a provisional application is not examined, but must be converted to a non-provisional application within 1 year. Therefore, the inventor has until December 31, 2010 to file a non-provisional application for examination by the U.S. Patent Office. Normally, he or she would also have until December 31, 2010 to file any applications in other countries and/or a single PCT application. However, because he or she publicly disclosed his invention prior to filing the provisional application, he or she may be barred from obtaining a patent in other countries.

Example 2

An inventor invents a product and before publicly disclosing the invention or offering the product for sale, he or she files a provisional patent application on January 1, 2009. The inventor would have until January 1, 2010 to file a non-provisional application and any international applications. So on December 31, 2009, the inventor files both a non-provisional U.S. patent application and a PCT patent application. His non-provisional U.S. application would be examined by the U.S. Patent Office. His PCT application would postpone entry of the application into other countries until 30 months from his priority date. Therefore, since his priority date is January 1, 2009, he would be able to postpone entry of the patent application in other countries until July 1, 2011 with the PCT application.


Many of the time requirements for U.S. patent applications and international patent applications are complex and confusing. Of course, I recommend speaking to a patent attorney regarding these issues. But I hope that this article helps you be aware of these requirements so that you do not run out of time for obtaining patent protection on your invention.


Be Careful with Provisional Patent Applications

October 19, 2009

A provisional patent application may be a useful way for an individual or a company to begin the patent process, especially for those who are particularly sensitive about the bottom line (who isn’t?).  The reason being that a provisional patent application is typically less expensive, at least in the short term, than a regular non-provisional patent application.  However, one should approach provisional patent applications with a great deal of caution.

If you have an innovative product or process, you may be interested in obtaining patent protection from the U.S. Patent Office.  The general course is to file a regular, non-provisional patent application, have the application examined, and (hopefully) obtain a granted patent for the invention with a scope of claims that covers the product or process and adequately prevents others from making, using, selling and/or importing the invention in the United States.  But inventors are typically offered a choice at the beginning of the process – file the regular, non-provisional patent application, or file a provisional patent application.  So what is the difference between the two, and why would an inventor wish to pick one over the other?

A provisional patent application is a less expensive way to obtain “patent pending” status in the U.S. patent office and to obtain a filing date for the invention, compared to a non-provisional patent application.  A provisional application is filed with a lower filing fee ($110 for a provisional application as opposed to $545 for a non-provisional application).  Moreover, strict adherence to some of the non-provisional filing requirements is not necessary in a provisional application.  For example, there is no requirement for a set of claims in a provisional application (although some will argue that at least one claim is necessary).  Moreover, there are no drawing requirements.  Because of this, preparing and filing a provisional patent application can be less costly than filing a regular, non-provisional application.

However, one should be wary of certain drawbacks with provisional patent applications.  First, a provisional application is not examined by the U.S. Patent Office, and only provides a priority date for the invention at the U.S. Patent Office (allowing an inventor to claim the invention as “patent pending”).  The application only lasts for a year; therefore, if one wishes to have the invention examined and issued as a patent, one must still file a non-provisional patent application within the year (and pay the non-provisional filing fee of $545).  If a patent attorney is involved in preparing the non-provisional patent application (recommended), it will likely be necessary for him or her to review the provisional application for form and completeness and edit the same, prepare formal drawings, and draft or review a claim set.  This may end up costing an applicant more than merely filing a non-provisional application at the start.

Moreover, by starting with a provisional patent application and waiting up to a year to convert it to a regular, non-provisional patent application, the examination will also be postponed for up to a year.

The biggest danger is that a provisional application may not satisfy the written description requirements.  Because certain requirements are relaxed, some believe that a full disclosure of the invention is not required.  However, a provisional application still requires a complete disclosure that satisfies the so-called “112 written description requirements” (from 35 U.S.C.  112, first paragraph), which reads as follows:

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such fully clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

These description requirements are exactly the same for a provisional patent application as they are for a non-provisional patent application.

If the written description requirements are not met in the provisional application, a patent issuing from that provisional application may not be able to claim priority back to the provisional application.  This can have serious repercussions.  For instance, a patent that is unable to claim priority to a provisional application because of a lack of sufficient written description may be subject to prior art references to which it otherwise would not be subject.  These references may invalidate the patent.  Moreover, since one must file a patent application within one year of publicly disclosing the invention or offering the invention for sale, relying on a provisional application with insufficient disclosure may cause that disclosure to be outside the one year period for filing an application.  In either situation, the patent would be worthless.

So one should be wary of starting the patent process with a provisional patent application, especially if the goal of filing a provisional application is to save a great deal of money.  It is my experience that some money can be saved initially by filing a provisional application instead of a non-provisional application.  But the drawbacks may outweigh the advantages, and inventors should carefully consider the ramifications and the risks involved.