How Can I Turn My Provisional Patent Application into a Non-Provisional Application?

A provisional patent application is an extremely useful tool for technology startups. It allows a company to file a utility patent application on an invention without disclosing the elements (claims) of the invention to be protected, oath or declaration regarding the invention, or disclosure statement of prior art incorporated into the invention. It must be filed within 12 months of the first public disclosure of the invention, such as selling the invention to the public. Below we explore what is a utility patent, the benefits of a provisional patent, and how to convert a provisional patent filing into a non-provisional patent filing.

Filing a provisional patent application

A provisional patent application must include the following information:

• Application forms identifying the filing as provisional,
• The names of all inventors,
• Residences of the inventors,
• Name or title of the invention,
• Patent agent or attorney and registration number (if applicable)
• Address for correspondence, and
• any U.S. Government agency with rights in the invention.

The application will generally include specifications for the objective, purpose, and usefulness of the invention. To make certain that the invention description and specification is understood, it is advisable to include drawings of the invention. These drawing can be amended later at the time of the non-provisional filing.

Filing the non-provisional patent application

The filer of a provisional application has two options to convert the filing into a non-provisional application. She can file an amendment to the provisional application or she can file a non-provisional application referencing the provisional filing. In either event, the non-provisional application must include the claimed elements of the invention, oath or declaration of the inventor that the invention is novel, and references to prior art to rely upon in the examination. The downside of filing an amendment regards the time period for patent protection. Most utility patents offer protection of rights for 20 years from the date of filing. Filing a new petition that references the provisional application protects the invention for 20 years from the date of filing of the non-provisional application.

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