Provisional patent applications (“PPAs”) can be great. Filing a PPA with the United States Patent and Trademark Office (“USPTO”) gives you patent pending status, and one year to file the full non-provisional patent application (“non-PPA”) to claim priority to the PPA. PPAs typically require less work, as the requirements are not as stringent as for a non-PPA.
PPAs are not published (except when a non-PPA claiming priority to the PPA is filed or granted), and they are not examined on their merits. The “not examined on their merits” is where a lot of confusion lies. If you type in on Google, “are provisional patent applications examined?”, the answer will be “no.” Even though this “no” has a lot of caveats, there are many blogs and other information online that simply gives the black and white answer of “no” without any discussion of what happens with a PPA after filing.
Taking that “knowledge” can result in issues later. PPAs must contain: a detailed written description, drawings (if necessary to understand the invention), names of the inventors, filing fee, and a cover sheet that identifies the invention. So, when a PPA is filed, the USPTO simply confirms those elements are present, and if they, a filing date is given to the applicant. Although the PPA must meet the best mode and enablement requirements, at this initial stage, the USPTO does not review the PPA for those items. This is what people mean when they say that PPAs are not examined. They are only reviewed to make sure they have these requirements, without any real regard for the contents of the disclosure itself.
When a non-PPA is filed that claims priority to a PPA, the examiner will examine the PPA to determine if the claims in the non-PPA are properly supported by the PPA. If the examiner determines that claims in the non-PPA are not supported, the examiner will not grant the PPA’s priority date to the non-PPA. This is something that is glossed over oftentimes by inventors, patent practitioners, etc.
People are typically told to just slap a cover sheet on just a brain dump of your invention and file the PPA. That’s why some online sites offer PPAs for less than $200. You as the inventor are expected to simply list what you think is important and this third-party service will put a cover on your work and file it. Then, when it comes time to file the non-PPA, you may have issues if your invention was not properly disclosed in the PPA.
There can also be issues if there is ever a patent infringement lawsuit based on priority. Imagine a situation with this timeline:
- – Party A files a PPA on Jan 1, 2025
- – Party B files a PPA on Jan 2, 2025
- – Party B files a non-PPA claiming priority to their PPA on June 1, 2025 (Party B’s non-PPA is properly supported by Party B’s PPA)
- – Party A files a non-PPA claiming priority to their PPA on July 1, 2025 (Party A’s non-PPA is not properly supported by Party A’s PPA)
Based simply on the timeline, Party A has priority. But, if Party B examines Party A’s PPA and determines that Party A’s non-PPA is not properly supported by Party A’s PPA, then Party A would lose their Jan 1, 2025, priority date. Party B would have a priority date of Jan 2, while Party A would have a priority date of July 1, and therefore Party B could sue for patent infringement against Party A.
If you do file a PPA and you make substantial changes/improvements on your invention prior to the one-year deadline, we can always file subsequent PPAs. Then, the non-PPA could claim priority to each of the PPAs, provided that the earliest PPA was filed within one-year of the non-PPA. However, this could potentially result in some claims having different priority dates based on which PPA they were disclosed in. With respect to any claim, you will only have priority to the earliest PPA that properly supports that claim in full. And, if you have a claim that is supported by multiple PPAs, you will typically only have priority to the later of the priority dates of the PPAs with respect to that claim. So, if you filing a non-PPA claiming priority to two PPAs, and you have a claim with 99% material that is supported by a PPA filed on June 1, 2025, and 1% material that is supported by a PPA filed on July 1, 2025, the entirety of that claim will be given a priority date of July 1, 2025.
I have been practicing for almost 15 years. My perspective of PPAs has changed over the years. Early on in my career, I was not as concerned with adding claims and fully fleshing out the invention as much as possible in the PPA. Luckily I never experienced any priority issues. But now I am of the belief that the PPA should be treated much more like a non-PPA. More money and time should be spent on the PPA, and this includes a very decent set of claims (which is not required for a PPA). Spending more money on a PPA will put you in a better position when you file the non-PPA as the PPA will allow you to properly claim priority. Additionally, if done properly, most or all the work done on drafting the PPA will be carried over to the non-PPA. There are different ways to save money when doing business but skimping on a PPA is not one of them.
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