Talk:Provisional application/Archive 1

Contradiction

It appears to me that this article contradicts itself. On the one hand, it says that: "A provisional application, as such, (...) can never become a patent". However, on the other hand, it says in the introduction that "A provisional application (...) is [an] (...) application for patent".

This is an important issue for the application of the Paris Convention, which provides:

"Article 4 A. (1) Any person who has duly filed an application for a patent (...) in one of the countries of the Union (...) shall enjoy, for the purpose of filing in the other countries, a right of priority (...)." (emphasis added)

--Edcolins 12:00, 20 January 2006 (UTC)

The article says a non-provisional application can be converted into a provisional application. I think this is not mentioned in the provided USPTO external link [1]. Is it correct? I understood that the opposite was correct!? --Edcolins 12:07, 20 January 2006 (UTC)

• Practically speaking, a provisional application usually does not include any claims, thus it can never become a US patent. That said, you can ask that a provisional application become a non-provisional (if the provisional can stand on its own) and thus a converted provisional can become an actual patent. In any event, a provisional application is a bonafide US national patent application for all intents and purposes. The filing of a provisional application provides that a one year window to supply a formal patent application -- not unlike other continuation practice applications.
• Second, a non-provisional MAY be converted to a provision, see 37 CFR 1.53(c)(2):

  "An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section".

• Paragraph (b) is the application for a non-provisional. I'm having a hard time imagining that this comes up that often, but it is possible. mmmbeer^{T / C / ?} 14:13, 20 January 2006 (UTC)

The reasons why a provisional US patent application cannot in itself become a patent are purely formal, and do not stem from missing claims. A provisional application may include claims, but it still cannot become a patent, because it is not a regular patent application. Important differences are that no regular examination procedure is performed for a provisional application by the USPTO, and it has "a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended." (USPTO quote - http://www.uspto.gov/web/offices/pac/provapp.htm). A provisional application does have many of the features of a non-provisional (regular) application, such as establishing a filing date, both for the US, and the Paris Convention priority year, and authorizing the use of "Patent Pending". -KØA 195.159.216.130 13:46, 10 February 2006 (UTC)

Error

There is an error (or at least lack of clarity) in the following sentence from the article: "If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period. However, the original priority date of any expired provisional applications will be forfeited."

If Provisional A is filed on day 1, and Provisional B is filed at 6 months, then if a PCT is filed at 13 months it will not benefit from the priority date of A ***or*** B. This is Paris Convention. Someone should find a source for this, and fix the above quoted sentence, because otherwise readers may well think that they can keep re-file the same provisional at 11 months, and be guaranteed of the priority date of the later-filed provisional. (They would lose, and get no benefit whatsoever.) —Preceding unsigned comment added by 85.250.137.224 (talk • contribs)

Thank you very much for your note. I have added a note in the article... This becomes very technical. Feel free to correct it or improve it, if you find an error or a way to make it more readable. There is certainly room for improvement. Thanks again. --Edcolins 20:28, 10 January 2007 (UTC)

One important point is that if the Provisional Patent application is used for priority in the U.S., it then will ultimately become public on the USPTO Public PAIR website upon conversion to a Utility Patent application. Also, the Face Page of the US Patent application will refer to the number and date of the Provisional Patent application. If the Provisional application becomes public in any way, it starts the one-year clock in the PCT. The only way that a Provisional application does not start the one-year clock is if it is "withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority" in any State. Note that U.S. signed the Paris Convention and so a Provisional application used as a priority document for a US Utility patent application starts the one-year clock in the PCT. http://www.epo.org/patents/law/legal-texts/html/epc/2000/e/ar87.html Hence, the proper strategy is to file a Provisional Patent in the US and then - within one year - file a PCT application. Otherwise, just abandon the Provisional and don't use it to establish patent priority in any State, including the United States. —Preceding unsigned comment added by Rkornbluth (talk • contribs) 17:20, 7 May 2009 (UTC)

Question: two or more regular applications from one provisional

It is not clear from the article, (and not clear to me from all that I read) what happens to one provisional that turns out to cover two sepparate real patents, that must be sepparate. Can anyone help? --Pashute (talk) 18:13, 24 June 2008 (UTC)

When did Congress (and/or the PTO) first permit provisional applications to be filed?

In other words, when was the "provisional application" "invented"? Robert K S (talk) 14:58, 3 November 2010 (UTC)

According to this, it was in the 1994 amendment to the 1952 Patent Act. US Patent History Robert K S (talk) 16:09, 5 November 2010 (UTC)

Provisional applications are similar to Patent caveats which were discontinued in 1909. The main difference is provisonal applications are not renewable, but caveats were. Greensburger (talk) 23:12, 26 December 2010 (UTC)

Rename into Provisional patent application

IMHO, title Provisional application is way too overbroad for this article, what about renaming it into Provisional patent application? Are there any objections to such rename? Ipsign (talk) 11:30, 30 January 2012 (UTC)

I agree that the present title is overly broad. But Provisional patent application would suggest a patent application that is provisional, which is misleading. A provisional application is not a patent application. I suggest Provisional application (in the US Patent Office) Greensburger (talk) 02:32, 31 January 2012 (UTC)

I would prefer keeping "provisional application" as title. Isn't the expression "provisional application" mainly used in patent law? If not, i.e. if the expression is also widely in other areas, then I would suggest renaming it into "provisional application for patent" as this seems to be the official designation (see [2]). --Edcolins (talk) 20:43, 31 January 2012 (UTC)

Yes the expression "patent application" is widely used in patent law, but that is not what a "provisional application" is. A "provisional application" is not a "patent application". Rather a "provisional application" is an application for a file to be opened in the patent office that establishes a "first to file" priority date for the invention. An inventor cannot send a letter to the patent office to request examination of his "provisional application" because a "provisional application" cannot be examined. Instead the inventor may later file a "non-provisional patent application" which is a similar but distinct second document that refers to the file number of the previously filed "provisional application". The inventor requests examination of this second document. The main distinction between a "provisional application" and a "non-provisional application" is the fees paid to the patent office and the inventor's attorney for a provisional application is much less than a non-provisional application, because the attorney's fee for doing a prior-art search and drafting claims and the examiner's time is not spent examining the provisional application if the second document and larger fee is never sent to the patent office. Greensburger (talk) 04:35, 1 February 2012 (UTC)

What about Provisional application (patent law)? Ipsign (talk) 13:33, 1 February 2012 (UTC)

Yes, Provisional application (patent law) is ok. Greensburger (talk) 15:31, 1 February 2012 (UTC)

Ok, but only if provisional application becomes a disambiguation page. Otherwise, the move/rename seems useless, in my opinion. --Edcolins (talk) 19:42, 2 February 2012 (UTC)

The problem is not that "provisional application" has more than one meaning, for which disambiguation would be suitable. Rather, the problem is that people misunderstand "provisional application" to be a provisional type of "patent application" which it is not. Do you know of any other meaning for "provisional application"? Greensburger (talk) 00:46, 3 February 2012 (UTC)

I thought the problem was that the title "provisional application" was "way too overbroad for this article", not the understanding that a provisional application does not mature into a patent. I think there is another concept which could lead to a good entry, the concept of "provisional application" clauses in treaties [3] [4] [5].--Edcolins (talk) 20:10, 3 February 2012 (UTC)

I have created Provisional application (disambiguation) for now. --Edcolins (talk) 20:37, 3 February 2012 (UTC)