Provisional Patent Applications in Houston, Texas and Fort Bend County

In the United States, there are several types of patent applications that inventors can have a patent attorney file on their behalf.  The one type of patent application that may be filed is called a provisional patent application.  A provisional patent application is used as a low cost way to start the patent process.  This process has been used since mid-1995.

Pursuant to 35 U.S.C. §111(b), a provisional patent application is not required to have patent claims or an oath or declaration from an inventor.  Provisional patent applications are used to establish an early effective filing date for acquisition of a technology by an inventor.  Once the provisional patent application is filed, the inventor may use the term “patent pending” in connection with the invention in descriptions to the public.

While provisional patent applications are used to determine the effective date of filing a the patent application, it is important to note that provisional patent applications are not, by themselves, actually examined by the United States Patent and Trademark Office (“USPTO”).  To this end, many inventors do not file such types of patent applications as the submittals are merely a “placeholder” for a more permanent patent application called a nonprovisional patent application.  To this end, while provisional patent applications are cost effective to file to receive an early filing date, provisional patent applications offer few advantages to inventors who are intent on getting their patent application reviewed by the USPTO.

Also of note is that provisional patent applications should be able to instruct a person of skill in the art to be able to make and/or use the inventive apparatus or method.  If the provisional patent application does not provide such a capability, the effect of the provisional patent application will be very little. 

The provisional patent application has several distinct drawbacks as well.  Provisional patent application have a twelve (12) month pendency period.  Within that first 12 months, the inventor must file a nonprovisional patent application covering the technology disclosed in the provisional patent application.  If a filing of a nonprovisional patent application occurs after the 12 month deadline, the provisional patent application is determined to be abandoned.

To file a provisional patent application, certain items should be included, namely:

1)     The names of all inventors

2)    The residences of all of the inventors

3)    The title of the invention

4)    A correspondence address

5)    If any United States agency has a property interest in the application.

Items 1 through 5 may be included in a coversheet, along with a filing fee to the USPTO.  A specification should also be submitted that complies with the requirements of 35 U.S.C. §112.  If drawings are necessary to convey the ideas described in the specification, these drawings should also be included.