Key Takeaways

  • Provisional patent rights allow inventors to collect royalties for infringement occurring after publication of a patent application and before the patent is granted.
  • A provisional application establishes an early filing date but does not itself create enforceable rights until followed by a nonprovisional application.
  • To enforce provisional rights, the final granted patent must have claims substantially identical to those published.
  • Inventors must file a nonprovisional application within 12 months of the provisional to maintain priority.
  • International filings under the Patent Cooperation Treaty (PCT) can also claim provisional priority.
  • Provisional applications are cost-effective and less formal, but incomplete or poorly drafted filings may weaken later protection.
  • Competitors can challenge applications through prior art submissions, but timing is critical.
  • Published applications deter potential infringers, but enforceable remedies apply only once a patent issues.

Provisional Patent Rights

Provisional patent rights help protect inventors in cases where another person sold, copied, or marketed an item between the inventor's filing for a patent and the issuance of the patent.

What Are Provisional Patent Rights?

When an inventor gets a patent on an invention, it excludes others from creating, selling, or using that device without the inventor's permission. Provisional rights are in force between the date of the patent application and the actual granting of the patent.

Under provisional rights, inventors are allowed royalties from the "copier," the term for anyone else who created, used, sold, or marketed the patent pending item as described in the patent application between the time the application was published and the time the patent is granted.

Common Misconceptions About Provisional Rights

Many inventors assume that filing a provisional patent application automatically provides enforceable protection. In reality, provisional patent rights do not give the applicant the ability to sue immediately. Instead, they establish a filing date and allow the inventor to later claim royalties once a patent is issued—if the issued claims are substantially identical to those published. Another misconception is that “Patent Pending” labels carry legal weight. While these labels serve as deterrents, they do not prevent others from making, selling, or using the invention until the patent is granted.

Requirements for Provisional Rights

Royalties don't begin the minute an application is filed but rather on the day it's published. The copier must have accessed and read the published patent application. All claims in the inventor's application must match when the patent is granted, or the inventor cannot seek royalties under provisional patent rights. In other words, the patent application should match the patent paperwork when it's granted, or the inventor can't sue for royalties. If they don't match, another application needs to be filed.

Filing and Documentation Standards

Unlike nonprovisional applications, provisional applications have fewer formal requirements. However, the application must still fully describe the invention to ensure priority. Essential components include:

  • A detailed written description enabling someone skilled in the field to reproduce the invention.
  • Drawings when necessary to explain the invention.
  • Appropriate government filing fees.

While claims are not required in a provisional filing, failing to include sufficient detail may limit the scope of later patent protection.

Why Provisional Patent Applications Are Important

Provisional patent rights help protect inventors while they're still developing their invention. Inventors should describe the item at the moment of filing the application and file it as a provisional application.

After 12 months have passed, or when the invention has been finalized, the nonprovisional patent application is filed. This second application includes the initial status of the item and any improvements or additions made upon completion.

The patent office doesn't do anything with a provisional application until the inventor files a nonprovisional application. This benefits creators because they gain the right of priority.

Once an invention is a solid idea that's describable, it's best to file a provisional patent application right away. These applications protect initial ideas and inventions while the idea is refined and improved.

Strategic Benefits of Provisional Filings

Provisional applications are especially useful for startups and small businesses that want to secure an early filing date without incurring the costs of a full nonprovisional filing. Benefits include:

  • Lower cost: Filing fees are typically a fraction of nonprovisional applications.
  • “Patent Pending” status: Provides a competitive edge by signaling to investors and competitors that protection is in progress.
  • Flexibility: Allows inventors to refine or test their invention during the 12-month window.
  • International advantage: Establishes a priority date that can be used in foreign filings under the PCT.

This approach helps secure early rights while buying time to raise funds or further develop the invention.

Rights Based on Substantially Identical Inventions

Rights cannot be claimed unless the invention is nearly identical to the item described in the published patent application.

Time Limitation on Obtaining a Reasonable Royalty

Rights cannot be claimed for reasonable royalties unless the claim is filed within six years of patent issue.

Requirements for International Applications

International applications become effective on the date of publication. If the international application is in any non-English language, the effective date is the day when the Patent and Trademark Office obtains a translation into English. The director can ask applicants to produce copies of the international application and translation of the application.

Limitations of Provisional Patent Rights

Provisional patent rights come with several limitations:

  • No automatic enforcement: Rights only become enforceable once the patent issues, and only for claims that match the published application.
  • Time-sensitive: If a nonprovisional application is not filed within 12 months, the provisional lapses permanently.
  • Incomplete coverage: A poorly drafted provisional may not fully protect the invention, leaving gaps competitors can exploit.
  • Geographic restriction: Provisional applications apply only within the U.S., although they may support later foreign filings.

Ways a Competitor Can Submit Prior Art Against an Application

Third-party submissions to patent applications must be done within two months of the application's publish date or when the publication notice is mailed, whichever comes first.

Private citizens, business entities, and government agencies may file a protest against a pending patent application. The protest must be filed before the application is published or before a notice of allowance is issued.

Any individual, government or business entity, real party in interest, or person without interest may turn in patents for publication. They must explain why they have a claim for the rights to patent any invention.

Contents and Term of Patent

This part of the law protects the patent applicant's right to a reasonable royalty for sales of products or services described in a resulting patent. The start date begins on the patent issue date and ends 20 years after the application filing date in the United States, unless the application indicates a reference to an earlier filed application. Any copies, drawings, and specifications must be indicated in the patent and will become part of the patent.

Practical Examples of Provisional Rights in Action

Consider a scenario where an inventor files a provisional application for a new device. Six months later, a competitor begins selling a nearly identical product. Once the nonprovisional is filed, published, and later issued as a patent, the inventor may be entitled to collect royalties for sales that occurred after publication. This illustrates how provisional rights serve as a bridge between filing and enforceable patent protection, even though damages cannot be claimed until after a patent is granted.

Extension of Provisional Rights Term

Provisional rights terms from the U.S. Patent Office can be extended, but it's expensive. In some instances, inventors can claim priority to an application made up to 14 months previously. Claiming priority to any application after 12 months and up to 14 months will cost about $1,700. This extension period is very restricted.

Frequently Asked Questions

  1. Do provisional patent rights allow me to sue immediately?
    No. You cannot enforce provisional rights until your patent is granted, and only if the issued claims match those published.
  2. How long do provisional patent rights last?
    A provisional application lasts 12 months. You must file a nonprovisional application within this period to keep priority.
  3. Do I need claims in a provisional application?
    No, claims are not required. However, a thorough description is essential to ensure enforceability later.
  4. Can I use “Patent Pending” after filing a provisional application?
    Yes. While it serves as a deterrent, it does not carry legal enforcement power.
  5. Are provisional rights recognized internationally?
    Not directly. However, a U.S. provisional can be used to claim priority in international applications filed under the PCT.

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