The provisional patent application data sheet is a very important part of the patent filing process. If you plan to file a patent application, it is vitally important that you understand what should be on a provisional patent application data sheet.

Provisional Applications Filed Under 35 U.S.C. 111(b) [R-07.2015]

A provisional application filed under 35 U.S.C. on or after Dec. 18, 2013, will be provided a filing date as of the date a specification was received in the office, with or without any claims. Provisional applications filed prior to this date will be given a filing date according to pre-PLT (AIA) 37 CFR 1.53(c) as of the time the written description and all drawings are filed. The filing date requirements for a provisional application will be the same as the requirements for a nonprovisional application.

All amendments are not allowed after the filing date of the provisional application, with exception to those that are required to make the provisional application work with all regulations that are applicable.

If the drawings are rejected, the applicant will be notified and provided a time to provide the missing elements to ensure the filing is complete with or without drawings or figures.

The provision on 37 CFR 1.53(c)(1) requires that all provisional applications are to be filed with a cover sheet. This can be an application data sheet or a cover letter stating that the document is a provisional application.

Any application submitted will be treated automatically and filed under 37 CFR 1.53(b) unless it is identified as a provisional application. Provisional applications filed without the cover sheet or the required fee will be notified and provided a time period to pay the fee or provide a cover sheet. There will be an additional surcharge also. The time period is set two months from the date of notification but can be extended. The reason for this is to prevent any unnecessary abandonment of the filing.

The office may dispose of the provisional application if the fee is not paid or if there is no contact address. The applicant has two months from filing to pay the fee, provide the cover letter, and pay the surcharge to prevent abandonment.

If your provisional application has not been disposed of, copies of your application will be provided by the USPTO when requested for a fee.

A basic filing fee has to be paid upon filing or based on the time period provided in 37 CFR 1.53(g).

Application Data Sheets and How They Help

The application data sheet provides all bibliographic data for a USPTO application. It is advantageous because it reduces errors in the conversion and recording of an application into the USPTO's official electronic records.

The electronic filing through the USPTO's website has reduced errors. However, it relies on the documents like declaration or specification instead of user input to create electronic records.

Examples of U.S. Patents That Could Have Benefited From ADS

The USPTO has specific procedures in place for converting the information from a paper application into useful electronic data that will be stored and handled in their databases. These procedures are surprisingly accurate when you consider the sheer number of applications they receive and create on a daily basis. As is the case with any system, however, errors are going to happen. Here are a few real-world examples of United States patents that would have greatly benefited from the use of an ADS:

  • United States Patent Numbers 6, 112, 451, 6,631, 400, and 6,637,004. All of these patents related to "Statement Regarding Federally Sponsored Research for Development."
  • United States Patent Number 7,263,562 pertaining to "Method and System for Describing Uploaded Files Statement Regarding Federally Sponsored Research or Development."
  • United States Patent Number 6,389,215 related to "Low Birefringent Polymides for Optical Waveguides Statement Regarding Federally Sponsored Research or Development."
  • United States Patent Number 6,829,526 relating to "Train Detection System and Train Detection Method Cross-Reference to Related Application."
  • United States Patent Number 6,786,734 pertaining to "Electrical Adapter With a Foldable Housing Cross-Reference to Related Application."

All of these patent filings could have potentially avoided some of the issues that they faced had an ADS been used as a part of the application process.

The Requirements For an ADS

An ADS can be used in provisional and nonprovisional applications. The USPTO provides a form on its website. However, the fileable form has to be submitted as a text-based PDF. A scanned copy of the ADS form will be rejected and is not capable of loading automatically in the back end of the system.

The ADS must be in a very specific format and be titled “application data sheet.” It has to contain the following sections:

  1. Applicant information
  2. Correspondence information
  3. Representative information
  4. Domestic priority information
  5. Foreign priority information
  6. Assignee information

The domestic priority information provided in an ADS allow special reference acquired by 35 USC § 119(e) or 120, and 37 CFR §§ 1.78(a)(2) or 1.78(a)(5). It states that such information does not need to be made part of the specification.

Blank sections in an ADS will be interpreted as zero corresponding data for that label anywhere in the application. The timing of submissions of conflicting information decides in the event of an inconsistency between all the documents and the ADS.

Application Data Sheet Using Electronic Filing System (EFS)

Electronic filing system software is provided for authors and includes printed formatted application data sheets. However, it is only available for utility patents.

Reporting Changes on Application Data Sheet

Additional sheets are used to correct or update information in any prior submitted application data sheet. It should only include the information that is supplemented and cannot contain any previously provided information.

Bibliographic Data of an Application Data Sheet

The inventor's information that corresponds will contain an address, which can be indicated with a customer number. A nonprofessional application information packet will include the name of the invention, the number of drawings, suggested drawing figures for publication, the number assignment, type of application, and whether or not the application includes any part of the subject matter that is secret.

All plant applications must contain the Latin name, as well as the species and genus of plants.

The representative information will include the registration number of each person containing a power of attorney in the application; therefore, providing this information does not mean a power of attorney is included with the filing of the application.

The domestic benefit information includes an application number, the date of the filing, and the relationship and status of each application where a benefit is cleaned under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). Including this data in the application data sheet submits that the specific reference required by 35 U.S.C. 119(e) or 120 and § 1.78 are met.

All foreign priority information includes the application number and the country and filing date of each for an application where a priority is claimed. Providing this data in the application data sheet satisfies the priority as required by 35 U.S.C. 119(b) and § 1.55.

The applicant information will include the name and address of the representative, assignee, or who the person who is under an obligation from the inventor to sign his or her product. It can also be a person who otherwise shows a proprietary interest in the subject who is the applicant under § 1.43 or § 1.46. The office assumes the assignment information in the application data sheet will not substitute any compliance with requirements on the bibliographic information in order to have an assignment record this.

Signature Requirement in an Application Data Sheet

An application data sheet that is not signed will be treated only as a transmittal letter. Therefore, an application data sheet has to be signed according to § 1.33(b).

Patent Law Treaty Model International Forms

Requirements in § 1.55 or § 1.78 for the presentation of priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an ADS will be satisfied by presenting a priority or benefit claim in the patent law treaty model international request form. This reference in an application data sheet will be confirmed by the appearance of such reference to the prior-filed application on the request form.

The requirement in § 1.46 for the name of the applicant in an application data sheet will satisfy the presentation applicant name in the patent law treaty model international request form. Additional forms for this include the patent law treaty model international request for the recording of change in name or address form, or the patent law treaty model international request for the recording of change an applicant or owner form.

Patent Cooperation Treaty Request Form

Requirements in § 1.78 provide for the presentation of a claim number in 35 U.S.C. 119, 120, 121, or 365 the application data sheet. It will be satisfied nationally under 35 U.S.C. 371 through the presentation of benefit claims in the patent cooperation treaty request form that is included in the international application. The information of a benefit claim is on the front page of the publication of the international application under PCT Article 21 (2).

If the patent cooperation treaty request form is provided in an application under 35 USC 111, it has to be provided with a clear indication that the application under 35 USC 111 is wanted.

What Is a Provisional Application?

A provisional application is filed in the United States Patent and Trademark Office. You are provided with a filing date, but it is not searched or examined. It won't become a patent and will automatically be abandoned in one year. It may not claim priority from other applications and may not begin a 20-year patent term.

What Do I Need to Include in My Provisional Patent Application?

The applicant needs to supply specification and drawings. No particular format is required, and no claim is required. However, information from different countries indicates that it is ideal to include one general claim in the event of an issue if a different country decides the application with no claims is not complete.

Where Can I Get a Provisional Patent Application Form?

A provisional application form must always be written by hand.

What Forms Do I Need to File With Provisional Patent Application?

The following forms are needed for filing a provisional patent:

  1. A provisional cover sheet and fee transmittal form that can be downloaded from the USPTO website.
  2. A self-addressed postcard stating all items the application is filing.
  3. It must be filed in the USPS express mail with a return receipt request.

How Do I Turn My Provisional Application Into a Patent?

A provisional application will be turned into a patent if it is filed as a regular utility patent application. A PCT international application will also qualify within one year of the provisional filing date. You must claim the benefit of the provisional application and transfer the provisional application to a regular utility application.

What's the Difference Between a Provisional Application and a Disclosure Document?

A disclosure document is a paper that is filed under a former program of the USPTO. It allows the inventor to file a description of the invention with a fee of $10.

A provisional application is a true patent application. It will get you a filing date and lets you claim a patent pending status. However, the disclosure document program does not exist any longer.

Should I File a Provisional Application or a Regular Application?

A provisional application is not an inexpensive alternative to traditional patent applications. There are some great advantages if it is properly used.

Reasons Why You Might Want to File a Provisional Application

Filing an application for a provisional patent can provide you with a number of attractive benefits, such as:

  • Receiving the earliest filing date possible
  • Giving you enough time to file your patent application
  • Providing you with plenty of time to study your market and raise money for your project

In many cases, inventors choose to file for a provisional patent because they are an inexpensive way to gain a measure of protection for their intellectual property. They also offer up to 12 months for the inventor to continue to perfect their innovations, apply for a full patent, and gain the financial support they need to turn their ideas into a viable business.

It is worth noting, however, that provisional patent applications do come with their own set of potential drawbacks, as well. Some of these disadvantages might include things like:

  • Adding to the overall cost of your patent process
  • Potential delays related to filing your application
  • Giving you less time to design a patent than you might otherwise have

If you're considering a provisional patent, it's important to carefully consider the pros and cons of doing so. While a provisional patent application is highly beneficial for many inventors, it's not always the optimal solution. You may want to consider consulting with a professional to help you determine if a provisional patent application makes sense for you and your specific needs.

While they are certainly tempting for many inventors, if filing for a provisional patent ultimately ends up costing you more money than you're prepared to spend in the long run or reduces your available timeline unnecessarily, you might be better holding off on the patent process altogether until your intellectual property is at a stage that makes more sense. Provisional patent applications typically make the most sense when you're getting ready to make the world aware of your creations, and you need to prevent others from infringing on your ideas and designs. If you're not yet at that point, you may be jumping the gun.

What About Foreign Patents?

Applicants must file for a patent in foreign countries within one year of filing a United States patent application. If the applicant would like to use the filing date of the United States application as the filing date in the foreign countries, it is important to remember the timing of the application. Many foreign countries will not allow the sale or publication before a patent is filed.

Navigating your way through the application process for obtaining a patent in the United States is a complicated and normally lengthy ordeal. If you're not familiar with this process, it's easy to become overwhelmed, miss important steps, and make simple mistakes that can ultimately become even more costly. Due to the extremely complicated nature of most patent applications, it is highly recommended that you avoid handling this process without assistance from a legal professional who knows the ins and outs of patent law.

Enlisting the services of a professional in this area will greatly reduce your chances of encountering an error and causing issues during the process. They can also help to answer questions pertaining to which patent is right for your invention, whether or not you should consider filing for a provisional patent, etc.

If you need help learning more about a provisional patent application data sheet, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.