CHAPTER 4 FILING A PROVISIONAL PATENT APPLICATION …€¦ · Remember that all patent-related...

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CHAPTER 4 FILING A PROVISIONAL PATENT APPLICATION Ch.4/A: The Provisional Application A Provisional Application is basically a placeholder. It provides an easy and cheap way to place a US patent application on file and obtain a filing date. This date becomes the priority date for subsequent related applications. A provisional application is never examined, and it expires one year after filing. Within one year of filing a Provisional Application, the applicant must file a nonprovisional US or International application claiming priority to the provisional, or forever lose the right to do so. If this is not done, the provisional application will expire and cannot be used as the basis for a new nonprovisional application and the priority date will be lost. A provisional application cannot claim priority to a previous provisional application. If the applicant wants to seek foreign patent protection, an international application, also referred to as a Patent Cooperation Treaty (PCT) application, must be filed within one year of the provisional filing date (we will discuss the PCT later). When a nonprovisional application is filed following a provisional application, the nonprovisional application (US and/or PCT) must refer to the provisional application, pointing out that the chain of patent applications started with the provisional filing. This is called Claiming Priority. The earliest filing date is called the Priority Date, and it is said that the nonprovisional application claims priority to the provisional. The provisional application is sometimes called the priority document. The concept of priority is discussed in more detail in other parts of the course. A provisional application differs from a nonprovisional in that the provisional 1) is never examined; 2) expires one year after filing, with no right of revival; 3) does not need to have any claims; 4) requires no ADS or Oath/Declaration; 5) requires no Information Disclosure Statement (IDS); 6) has a considerably lower filing fee and no search or examination fee; and 7) cannot claim priority to any previous application. The rules governing Provisional applications are set out at MPEP § 201.04(b). Ch.4/B: Parts of the Provisional Application Below is a list of documents needed to file a provisional patent application:

http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_04_b.htm#sect201.04b


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A Specification The specification is the full written description of the invention. Include drawings if they are required. No claims are required in a provisional application, but frequently one or more claims are included. Transmittal Sheet (PTO/SB/16) – see sample below The USPTO has a special provisional Transmittal Sheet (PTO/SB/16) that you should use with every provisional application. Provide all required information, including - each inventor‟s name and residence (city and state or foreign country if not in the US), - the title of invention (500 characters max, including spaces), - correspondence address or customer number, - a list of the enclosed application parts, including, if appropriate, specification (state number of pages), drawings (state number of pages), CDs, and “other”, and - the signature, name, and registration number of attorney/agent, and the docket number. An Application Data Sheet This is optional for a provisional application, because the provisional cannot claim priority from a previous application and no declarations are required. However, we recommend that you always use an ADS – it is just a good habit. A Filing Fee PTO/SB/16 includes a Fee box which includes a check box for claiming Small Entity status and boxes for the method of fee payment, including authorization of deposit account. Payment can be made by deposit account authorization, check, or any other method as stated under 37 CFR 1.23. The filing fee is reduced if the applicant is a Small Entity, and further reduced if you claim Micro Entity fee status. The additional fee for paper filing ($400 at time of this writing) does not apply to provisional applications. You may also have - A Small Entity declaration (only if your office uses one). This is not required, as PTO/SB/16 provides a check box for Small Entity, but some attorneys like to include a separate Small Entity declaration. - An Assignment. Sometimes you will file an Assignment at the same time. This is filed via the Electronic Patent Assignment System (EPAS) (http://epas.uspto.gov/) and is discussed elsewhere. - A Sequence Listing. If the application is biological in nature and contains information about genes and/or proteins, you may have a Sequence Listing, as well. This can be filed as a .txt file using EFS-Web or on paper. If filing on paper, you will also need a copy of the sequence listing on a CD and a Sequence Listing Statement stating, "The sequence listing information recorded in computer readable form is identical to the written (paper) sequence listing." This is not required if filing a .txt file by EFS-Web.

http://epas.uspto.gov/


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- A Computer Program Appendix Listing. If the application is electronic/software in nature, you may have a Computer Program Appendix Listing, which is a list of computer code. If it is over 300 lines long, it must be submitted on a CD (see 37 CFR 1.96). If the computer program listing is less than 300 lines long, with each line of 72 characters or fewer, it may be submitted as a drawing or as part of the specification. If it is part of the specification but has more than 60 lines of code, it must be positioned at the end of the description, but before the claims.


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Example: Provisional Application for Patent Cover Sheet- Pg. 1 (PTO/SB/16a)


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Example: Provisional Application for Patent Cover Sheet- Pg. 2 (PTO/SB/16b)

Ch.4/C: Finalizing and Filing the Provisional Application Remember that all patent-related documents (applications as well as follow-on documents) filed via EFS-Web are accorded the date and time of receipt in the USPTO. As you can see, very few documents are really needed to file a provisional - just PTO/SB/16 and the application. Thus, unlike with a nonprovisional application, there is seldom, if ever, the need to send documents in late. You may include an Application data sheet with your provisional, if desired. Put everything in order and check the filing documents for accuracy. Make sure that you have included PTO/SB/16, and check that the numbers of pages for each section are correctly noted on the PTO/SB/16 form. If you are using a deposit account, make certain that the transmittal authorizes the Commissioner to charge any additional fee to the deposit account and to credit any excess fees to the account. Filing Checklist for provisional application

� Specification and drawings (if any) � Transmittal Sheet (PTO/SB/16) with fee authorization � Application Data Sheet (optional)

Certification of Micro Entity status (PTO/SB/15A or B), if appropriate


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Option: Assignment, Sequence Listing, Computer Program Listing Ch.4/D: Filing the Provisional Application using EFS -Web. Prepare the application as explained above, then sign in to the EFS-Web system and follow the steps below. We recommend you follow the steps along on your computer so you can get a feel for how to navigate the website. The more often you do it, the comfortable you will be when you‟re in a time crunch. We will let you know when you need to exit so that nothing is actually filed. For the full walkthrough with images, see Chapter 12/C. Remember that all patent-related documents (applications as well as follow-on documents) filed via EFS-Web are accorded the date and time of receipt in the USPTO. Go to the USPTO website and log into EFS-Web with your USPTO.gov account using the usual two-step verification process. After clicking on the practitioner under whom you are working, you will see the certification screen and can select New Application/proceeding, Utility, Provisional. Selecting Provisional takes you to the EFS Registered Application Data screen where you enter the basic application information including title, docket number, inventor name and customer number. Even though this is a provisional application, and you are not required to file an ADS, this page still gives you the option of filing an ADS as a PDF document or as a web-bases document. If you are not filing an ADS just ignore this section. Enter the application information and click on Continue to show a summary of the data entered and attach the files to be submitted. Click Choose File to attach documents and select the appropriate Category and Document Description. Attach all your files. Note that if you need to add a TXT file, e.g. a sequence listing, you cannot do it at this stage. The system will not let you add TXT files at this stage, and you have to wait until you have uploaded and validate your PDF files first, and only then can you separately add your TXT files. The documents to be submitted must be in the correct format and must be named using the proper naming convention. If they are not, an error message will be displayed and the document must be removed and replaced by one of the correct type. If using PCT-SAFE, then .zip compressed files may be used. In almost all cases, PDF documents are used. File names cannot include spaces. Examples of valid file names include the following: Patent_file_001.pdf client12345.pdf lettersorNUMBERS.txt 123_abcde_z.zip


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Once all your documents are attached, click Upload and Validate The files will be uploaded and progress will be shown. On the following Validation screen, you will see the status for each attached file. You should review any Warning or Error, and amend or remove the document as required. You do not necessarily have to delete a file with a Warning, for example if the document is not an official USPTO-supplied form, you can still file it, but you should check to make sure there is no serious problem. You cannot file with a red triangle Error, and you will have to remove/fix/replace the file as needed. When all the files pass validation (no red triangles), continue to the Fee Calculator page. Make sure you select the right fee entity status: Regular Undiscounted, Small Entity or Micro Entity. Then select the fees required. Because this is a Provisional, there will only be one fee choice. On the next page, you will have a last chance to review all the application information before you file it. Review it very carefully. Click on document links if you want to review an attached document. Alternatively, at this stage, you can cancel, or save the documents for submission later. If actually filing, SUBMIT the application. Click only once. All you have to do now is pay the fees. Once filed, you will be automatically taken to the USPTO Financial Manager system to pay the fees using stored payment methods such as a USPTO Deposit Account, a Credit Card or Electronic Funds Transfer. Review the payment order details Select the payment method (usually deposit account) and any safety net Fee Preauthorization(s) desired, and SUBMIT PAYMENT. As soon as payment has been made, a screen will appear telling you that the submission has been successfully filed and the fees have been paid. A link to an Electronic Acknowledgement Receipt will be provided. This will show all the application data including the new application number and confirmation number that you will need to access the file. It will also show the date and time of filing. You can view, save, print, or email this receipt. You will not receive a confirmation via email that the USPTO has received your submission. Within an hour (usually sooner) you can access the filing in Private PAIR to view your submission.


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Electronic Acknowledgement Receipt - PROVISIONAL (first page)


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Electronic Acknowledgement Receipt – PROVISIONAL (last page)


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You will also receive an Official Filing Receipt some weeks later. It will be available through Private PAIR, and if you have opted to receive USPTO correspondence by email you will receive a notification of its availability from [email protected], which will have a subject line something like, “Private PAIR Correspondence Notification for Customer Number 54321”. You will also receive a paper copy of the filing receipt (and all subsequent USPTO correspondence) by mail, unless you have specifically requested that paper documents should not be mailed.


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Official Filing Receipt - PROVISIONAL


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Ch.4/E: Docketing After Filing a New Provisional Application Since a provisional application requires few documents, there are very few dates that you need to docket upon filing a new provisional application. These dates are: - 3 months: Check that the Filing Receipt (discussed later) has been received. If not, contact the USPTO. - 12 months: US nonprovisional and PCT reminders. Twelve months after filing the provisional application, a nonprovisional and/or International (PCT) application must be filed in order to maintain potential patent rights for the invention. Although these deadlines are not due until one year after the priority date, it is customary to docket nine and twelve months for foreign filing, as clients and applicants may need considerable time to make these important decisions. - 18 months: publication - 30 and 31 months: the national/regional filings Ch.4/F: Converting a Provisional (something you will most likely never do) Here is a confusing bit of trivia about provisionals. The US and some other countries use provisional applications, and the European patent bureaucrats have always resented this, both because it interferes with their desire for international harmonization of patent laws and because the provisional seems to give US applicants a bit of an unfair advantage, since the patent term of any issued patent is measured not from the filing of the provisional but from the filing date of the nonprovisional. So it is as though US applicants get an extra year up front to keep an option on an invention while deciding whether to go ahead and file a proper application. Instead of coming straight out and calling it unfair, however, the Europeans complained that a provisional application should not be allowed because it could never really become an issued patent. Technically, although you claim priority to a provisional application, you do not actually convert the provisional into a nonprovisional. So the nonprovisional is a completely new application, and the provisional, having served its purpose, dies. In order to side-step this objection, the US Congress cleverly amended the patent laws so that now a provisional actually can be converted into a nonprovisional application (35 USC 111(b)). It is technically the same application and, therefore, satisfies the European complaint. However, you would NEVER want to do this conversion procedure, because if you do, the term of your issued patent would start from the filing date of the provisional, and not from the filing date of the nonprovisional application. It is an interesting example of just how devious international patent politics can be.


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Ch.4/G: Petition to restore the benefit of a provisional application A provisional application is a place-holder. It lasts 12 months then lapses. If you have not filed a PCT or nonprovisional by that deadline, then you have lost your opportunity to do so. But there is a safety net exception. Up to 2-months after the 12-month date (i.e., 14 months from the priority date), you can file a petition to restore the benefit of a provisional application which allows you to file a PCT or a US nonprovisional and still claim priority to the provisional date. After that, you are out of luck. To restore priority to your provisional when filing your nonprovisional application, you must file a Petition to restore the benefit of a provisional application under 37 CFR 1.78. If filing a PCT application, you can restore priority under PCT Rule 26bis. A petition to restore the benefit of a provisional application must include (a) a proper priority claim in the ADS as required by 35 U.S.C. 119(e), (b) a petition fee as set forth in § 1.17(m); and (c) A statement that the delay in filing the subsequent nonprovisional application or international application within the twelve-month period was unintentional. Forms: No form is available for this petition. You must submit a signed request that includes information listed in Requirements of a Petition. These requirements are: (a) The petition must be in writing (37 CFR 1.2). (b) It must contain a statement of facts involved, the point(s) to be reviewed and the action requested (37 CFR 1.181(b)). The petition submitted should be as complete as possible and any evidence necessary should be submitted. (c) It must be accompanied by the correct fee. (d) It must be timely filed. After 14 months from priority it will be dismissed as untimely. (e) It must comply with all requirements in 37 CFR 1.78(d)(2)(i) and (iii) or under PCT

Rule 26bis as appropriate. You should file the petition either by EFS-Web, or by mail to Mail Stop Petitions, COMMISSIONER FOR PATENTS, P.O. BOX 1450, ALEXANDRIA, VA 22313-1450. A decision on the petition will be communicated from the USPTO in the normal manner by mail and/or via PAIR.

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CHAPTER 4 FILING A PROVISIONAL PATENT APPLICATION …€¦ · Remember that all patent-related...

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