By Michael Neustel, US
Prior to 1995, the only
option inventors had to protect their ideas was to file a
Non-Provisional Patent Application (NPA). However, in addition to an
NPA, inventors today now have the option of filing either a
Provisional Patent Application (PPA) or a NPA. Unfortunately, many
inventors and their patent attorneys don’t always understand the
numerous benefits of PPAs. Here are a few tips to help entrepreneurs
and inventors learn how to use the PPA to their advantage:
What is a Provisional Patent Application (PPA)?
A PPA is a patent
application filed with the United States Patent & Trademark Office (USPTO)
that provides an applicant with “patent pending” for a period of
one-year. At the end of this one-year period, the PPA is
automatically abandoned with no extensions available. A NPA can gain
priority from the PPA’s filing date if filed during this one-year
As with a NPA, a PPA
requires a complete written description of the invention. A PPA must
also include any drawings necessary to help describe the intricacies
of the invention. Unlike a NPA, a PPA does not require (1)
claims, (2) an information disclosure statement, (3) a declaration,
(4) formal patent drawings, or (5) a specific format.
Lower Initial Investment
The main benefit for most
inventors filing a PPA is the lower initial investment. The USPTO
filing fee is only $110 for a PPA compared to $462 for a NPA. In
addition, patent attorneys will typically provide a fee reduction of
20% - 40% from a NPA. On a typical invention, an inventor can
initially save around $1,000-$2,000 filing a PPA instead of a NPA.
"Patent Pending" Early
Another benefit of filing a
PPA is the ability to receive “patent pending” quickly. Since a PPA
does not have a required format and does not require the complex
claims section, a patent attorney or inventor is able to quickly
prepare/file a PPA with the USPTO in order to receive an early
“priority date.” An early priority date is sometimes desired because
of (1) foreign priority issues, (2) avoiding prior art, (3)
constructive reduction to practice, (4) proof of diligence, and (5)
one-year deadline approaching because of inventor’s own public
Filing a PPA also allows an
inventor to place a “Patent Pending” notice upon products, brochures
and other related items, which can deter others from copying an
invention. In addition, the inventor can license/sell the PPA to
another company while the PPA is pending.
A PPA does not
require the complex “claims” section and some of the other legal
documents required by a NPA. The claims section of a NPA is usually
the most difficult and highly legal part of a NPA. Since a PPA does
not require claims to be included, “self-drafting” a PPA is typically
easier for the average inventor.
A PPA does not require
preparation of an information disclosure statement or declaration, nor
does a PPA require a specific format as is required with a NPA. In
addition, a PPA is not examined by the USPTO for
patentability. Hence, an inventor does not have to learn all of the
patent laws of the United States and the Manual of Patent Examining
Procedure (MPEP) in order to adequately prosecute a NPA.
One-Year "Safety Net"
Many of the anti-PPA people
(mainly patent attorneys) constantly warn about how if the subject
matter within the PPA is not fully disclosed, then a subsequent NPA
will not be able to rely upon the filing date of the PPA. What they
don’t tell you is that this rule applies to both PPAs and NPAs.
This fear is obviously reduced if you hire a patent attorney to
prepare your patent application.
However, self-drafters can
rest easy because United States law clearly provides a one-year
“safety net.” Inventors have up to one-year from a public disclosure
of their invention to file a patent application (PPA or NPA).
Consider the following
example where you self-draft and file a PPA on 6/10/08, and then
publicly disclose your invention for the first time on 6/20/08. If
you made a significant mistake in preparing your PPA, you would still
be able to file another patent application (PPA or NPA) to correct
your mistake up to 6/20/08 (i.e. within one-year of your first public
disclosure). In other words, you can basically disregard your
original PPA and rely solely upon your second patent application for a
priority date. The main downside to this is that you will lose most
of your patent rights in most foreign countries by losing your PPA
PPA vs. NPA
If used wisely, PPAs have
numerous advantages for inventors, particularly self-drafters.
Inventors should understand that a PPA has the same effect as a NPA,
except that a PPA is not examined by the USPTO and therefore will not
issue into a patent by itself. By reading the cited PPA Resources and
this article, you should be able to make a decision as to what is best
for your situation.
PPA Resources on the Internet
For more information about
PPA’s and their various uses, I recommend that inventors visit the
following web sites:
- USPTO Web Site (www.uspto.gov/web/offices/pac/provapp.htm)
- PatentWizard Software (www.patentwizard.com)
– Created by Michael Neustel.
Michael S. Neustel is a
U.S. Patent Attorney who owns Neustel Law Offices, LTD (www.neustel.com)
and is the founder of the National Inventor Fraud Center. Mr. Neustel
is a co-author of The Patent Writer and is also the founder of
Neustel Software, Inc. which develops intellectual property related
software products including PatentWizard (www.patentwizard.com),
and ConfidentialityWizard (www.confidentialitywizard.com).
Mr. Neustel provides intellectual property seminars to businesses and
groups across the United States.
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