By David M. DeMay
One of the most common misunderstandings relates to the notion of a “provisional patent.” I’ve heard people say, “I have a provisional patent” or “I am protected because I have filed for a provisional patent.” Because of their misunderstanding of the process, many have unintentionally surrendered any patent rights they may have secured for their invention.
There is no such a thing as a provisional patent. There is, however, a provisional application for patent, which is just that – an application. It’s not a granted patent.
A provisional application for patent provides a way to establish an early priority date for a subsequently filed non-provisional application. Once you file a provisional application, you can use the term “patent pending.”
A quick primer:
- Provisional applications can’t be used for design patents.
- Provisional applications are not examined on their merits and become abandoned 12 months from their filing date.
- If a non-provisional application, claiming the benefit of the provisional application, is not filed within 12 months, you lose the benefit of the earlier priority date, and that may adversely impact the patentability of your invention.
Although you can use the term “patent pending” after filing a provisional application, you can’t enforce any patent rights. And there are penalties that can be imposed for false and/or deceptive use of that phrase.
“Patent pending” gives notice that a current patent application covering an invention is on file with the U.S. Patent and Trademark Office. It does not mean that a patent has been or will be allowed, only that an application for a patent is currently on file.
Many are confused when they hear about provisional rights authorized under 35 U.S.C. §154. This section does not grant rights to a provisional application for patent, nor does it grant rights before a patent has been granted.
Provisional rights under §154 relate to the retroactive enforcement of patent rights in very limited circumstances. If final patent meets certain criteria, you may be able to enforce your rights for some period before the date the patent was granted.
The takeaway is this: There is no such thing as a provisional patent. And while a provisional patent application allows you to use the phrase “patent pending,” you have no patent enforcement rights under a provisional patent application.
Disclaimer: The information provided in this article is not offered as legal advice. No attorney-client relationship with DeMay Consulting LLC is created by viewing this material.