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Considerations with United States provisional patent applications

Disclaimer: The information provided in this factsheet is meant as an educational resource only and should not be construed as legal advice.

  1. Provisional applications are specific to the United States (US). They can be used to secure a priority date based on a document and drawings that do not have to meet the same filing requirements and level of detail as a conventional patent application.
  2. A provisional application needs to be converted to a conventional application within 12 months, otherwise, the priority date is lost. There is no such thing as a "provisional patent" as the provisional application is never examined and will never issue to patent.
  3. A provisional application does not get published. Therefore, if it is not converted into a conventional application, the innovation it covers can remain a trade secret.
  4. When a provisional application is filed, "Patent pending" can be used. Keep in mind that the term must be removed if the provisional application is not converted to a conventional filing.
  5. Filing a provisional does not save cost, but does slightly delay the investment. In fact, the overall cost ends up being higher at the end. A US provisional application costs US$150 and the conventional filing fee is roughly US$830 (for a small entity). There is no discount when converting a conventional filing from a provisional.
  6. When the provisional is filed, it is not queued for examination. Therefore, the time it stays in the provisional state (up to 1 year) delays the issuance of the patent.
  7. The benefit of a US provisional application is to secure an early filing date (priority date) while continuing to do research/development. The priority date is used by the examiner to assess inventiveness of the application against existing patents or publications dated before the priority date.

    Example 1: Let's say you invent a new concept in January, and you file a provisional application to secure it. In May you have made sufficient progress on the invention, so you file another provisional to cover the new elements, and you do the same in September. When the 12-month deadline arrives in December, you combine the 3 provisional applications into one conventional application. In this case, the priority date of the claims will depend on what material the claim refers to. For example, a claim that includes material added in September will be examined against prior art that existed up to the filing date in September.

Key considerations for Canadian companies:

Additional information:

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