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What is a Provisional Patent Application?

Effective June 8, 1995, as a consequence of the adherence of the U.S. to GATT, it is possible to file what is called
a Provisional Patent Application with the U.S. Patent and Trademark Office. The Provisional Patent Application is
intended to be a relatively low-cost way of postponing the cost and effort of drafting and filing a full patent
application. The provisional application need not contain claims, and the filing fee is modest ($150 for large
entities, $75 for small entities). The applicant may then wait almost a year before filing a patent application. The
twenty-year patent term that runs from the first U.S. filing date does not start with the provisional application, but
instead begins only with the date of the subsequent patent application. As a result, one may postpone the start of
the 20-year patent term by up to one year by the use of a provisional patent application. The provisional
application may serve as a priority document for non-US convention filings.
Under U.S. patent law, the provisional application is subject to the same burdens under 35 U.S.C. § 112 as a
patent application. This means that the provisional application must be complete enough to enable one skilled in
the art to practice the invention, and means that the application must disclose the best mode known to the
applicant for practicing the invention. These requirements are likely to lead to difficulties for those who file sketchy
provisional applications. One who files a provisional application (and who fails to satisfy the requirements of § 112)
would be making a mistake to sit back and rely on that application as a justification for waiting eleven months
before taking the time and trouble to prepare and file a full patent application.
A second potential drawback of the provisional filing is that it postpones, by a year, any hint or clue from a patent
examiner as to whether or not the invention is likely to be patentable. No search report or office action will come
during the pendency of the provisional application; they will only be received after the filing of the patent
application. For the applicant who is considering whether or not to file patent applications in countries outside of
the U.S., the use of a provisional application virtually guarantees that no clues to patentability will be received from
the U.S. Patent Office that might assist in deciding whether or not to spend the money on foreign filing. The
applicant who files a patent application (rather than a provisional application) may, in contrast, receive an Office
Action before the year is up for making foreig