Provisional Application and what it is for

    Submitting a Provisional Application to the US Patent Office (USPTO) is a very popular step among developers, especially at the seed or startup stage. This action can be likened to taking a place in a long line when you say "I'll be back soon" and go about your business. If you did not return too late, then the line, although without much enthusiasm, will let you go back. The same is with the preliminary application - within 12 months after submission, you can return to the application and give it a move.

    Who can submit a preliminary application?

    Until recently, the filing of a patent application in the USPTO was allowed only on behalf of the author or the team of authors of the invention and was not allowed on behalf of others, including legal entities. To transfer the rights to an invention to a legal entity, it was necessary to file an additional application (Assignment). Since September 16, 2012, in accordance with the Leahy-Smith America Invents Act (AIA) [1], it has become possible from the very beginning of the patenting process to indicate a legal entity by the applicant, including when submitting a preliminary application. However, this can be done only with a “paper” filing of the application, since the designation of the legal entity as the applicant is provided only in the form AIA14 (Application Data Sheet), which can be used for both preliminary and ordinary applications for inventions, and is not provided in the SB16 form ( Provisional Cover Sheet),

    Physically electronic submission of a preliminary application can be made by any person from any country. The EFS-Web system is fairly easy to use and stable. The amount of the patent fee is determined by the built-in calculator directly in the filing process and for small businesses usually ranges from 130 to 200 dollars, depending on the number of pages of the application. You can pay in several ways, most conveniently with a credit card. It is not required to prove the status of a small business entity; it is enough to declare it by setting the appropriate checkbox.

    Pre-Application Requirements

    The preliminary application must contain, at a minimum, a description in any natural language and an SB16 form filled out in English. Unlike a full-fledged patent application, special requirements are not imposed on the description of a provisional application. Suitable, for example, material in the format of a scientific article, an abstract of a dissertation, an explanatory note from a report on R&D, etc. Preferably, the application also contains illustrations, if they contribute to an understanding of the invention. Illustrations should be black and white contrasting images. It makes sense to rasterize photographs in a special way so that they are suitable for printing and photocopying without significant loss of information. Description and illustrations should be presented in .pdf format with built-in full font sets. SB16 form can be downloaded from EFS-Web.

    So, what is next?

    If it is intended to obtain a patent on a preliminary application, it must be transformed into a regular patent application (Non-provisional Application or Utility Application). In this case, the priority of the successor application and the start date of the patent is established by the filing date of the preliminary application. If the preliminary application was not filed in English, then with subsequent manipulations before the expiration of the 12-month period, it will be necessary to submit a translation into English of the application itself and the materials included in the application by reference. Any subsequent action with a preliminary application will require the involvement of an American patent agent or patent attorney (attorney). If you do nothing with the preliminary application, after 12 months it becomes practically useless.

    What does the preliminary application give?

    The preliminary application does not pass the examination and is not published, but the applicant can receive a certified copy of the application with payment of the corresponding fee. A certified copy of the application can be used as a means of fixing the contribution of the parties when creating a joint business, in the form of an application to an investment prospectus, as evidence of scientific superiority, etc.

    The provisional application is a U.S. national patent application and may serve as the basis for filing international patent applications and patent applications in other countries while maintaining the priority date of the provisional application.

    The preliminary application allows you to use the fact of its filing in advertising and apply the warning label “patent pending” to the products within 12 months from the date of application.

    Underwater rocks

    The ease of filing a preliminary application makes it an economical and effective tool for early patenting. At the same time, one should remember the inherent limitations. For a preliminary application, priority cannot be obtained for any previously filed application.
    The preliminary application cannot be modified. Incomplete disclosure of the invention in the description and illustrations of the provisional application may lead to the fact that the claims of the successor application, the features of which are not disclosed in the provisional application, will have a later priority date for the examination, corresponding to the date of conversion, which may lead to a later start date patent validity.

    For an invention created in Russia, filing a preliminary application in the United States (as well as filing an application in any other state bypassing Rospatent) violates the current legislation of the Russian Federation (Article 1395 of the Civil Code of the Russian Federation. Patenting of inventions or utility models in foreign states and international organizations) and creates the risk of a fine under Art. 7.28 Administrative Code of the Russian Federation (Violation of the established procedure for patenting industrial property in foreign countries) - for citizens in the amount of one thousand to two thousand rubles, for legal entities - from fifty thousand to eighty thousand rubles; and if there is information that is a state secret in the patent application, there is also the risk of criminal prosecution. It is clear that in this case the state will still have to prove the fact of creating an invention on the territory of Russia.

    [1] en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act
    [2] efs.uspto.gov/efile/portal/efs-unregistered

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