Chapter 37 - § 37.4 • TYPES OF U.S. PATENT APPLICATIONS

• Jurisdiction: Colorado

§ 37.4 • TYPES OF U.S. PATENT APPLICATIONS

There are two types of patent applications that can be filed in the United States. The longstanding traditional patent application that most people are aware of is referred to as a non-provisional patent application.⁴⁸ A more recent and less familiar application is the provisional patent application.⁴⁹

§ 37.4.1—Provisional Patent Applications

A provisional patent application has less stringent filing requirements than a non-provisional patent application. For example, a provisional patent application can be filed without patent claims.⁵⁰ Furthermore, because it is not examined by the USPTO, it can be filed with less formality than what is required for a non-provisional patent application. This provides several benefits to the applicant, as well as many pitfalls. One initial benefit is that the cost of preparing and filing a provisional application is much less than what is typically required for a non-provisional application. Because most patent attorneys spend a significant portion of their time preparing the claims of a patent application, the omission of this claim preparation step can significantly reduce the cost of the application. Furthermore, the reduction in formal requirements that must be complied with when filing a provisional application (as compared to a non-provisional application) also reduces the cost of the application.

There also is a significant time savings in preparing a provisional application. Because the provisional application can be prepared in a more informal manner, it facilitates the inclusion of inventor-generated materials, such as rough sketches, flow diagrams, marketing materials, white papers, instruction manuals, and the like. This material can be used in some instances as the bulk of the provisional filing. Consequently, the provisional application can be prepared very quickly. The benefit in this regard is that a provisional application can be filed quickly when a potential bar-triggering event is about to take place. This often occurs when the invention is about to be disclosed at a trade show, a paper is about to be published in a technical journal, or the inventor is about to use the invention publicly. In such instances, the provisional patent application can be used to obtain an early filing date to preserve the patent rights for the invention, especially to preserve rights in foreign countries.

There are, however, significant pitfalls that clients need to be aware of...