Provisional Patent Applications
The U.S. patent law was amended to allow an inventor to file a provisional patent application without claims. Within one year, however, the inventor must file a formal patent application including claims. The cost of the initial provisional filing is somewhat less because of a reduced filing fee. Still, this cost advantage is not very significant because the specification as filed must meet the same disclosure standards as a formal patent application. This means the written description and the drawings must be of the same quality as would be needed to support the ultimate patent claims.
Thus, the patent specification must be prepared with an understanding of all aspects of the invention. Therefore serious efforts are required to examine the prior art so that the specification carefully describes the features that are determined to be novel and patentable. Many practitioners feel that a draft of the patent claims ought to be prepared, even if they are not included in the provisional filing.
The provisional patent application was not intended for cost containment, but as a way of avoiding a perceived imbalance between foreign and domestic filers. For example, an applicant could first file on January 1, 1996 in Germany and file a U.S. application later on January 1, 1997 and still be afforded in the U.S. the benefit of the filing date in Germany. Under U.S. law the expiration of this U.S. Patent would be 20 years from the U.S. filing date or January 1, 2017. In contrast a U.S. applicant filing January 1, 1996 would have an expiration date of January 1, 2016. Thus the patent of the inventor who files first in the U.S., expires one year earlier than that of the foreign applicant. The domestic filer can avoid this disadvantage by first filing a provisional patent application and then converting it to a full U.S. utility patent application within one year. In this way, the domestic filer and the foreign filer can be placed on equal footing.
The U.S. law is being progressively harmonized with foreign laws. As a result, patent counsel needs to constantly keep aware of how changes in the law will affect clients. Thomas Adams
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