Since June 8, 1995, the Patent Office has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements. A provisional patent application allows an inventor to get an application on file and use the filing date in subsequently filed regular U.S. utility patent applications and in corresponding applications outside of the United States. A provisional application is not examined, and any applications based upon the provisional must be filed within one year of the provisional application’s filing date.[1] The one year term of a provisional patent application does not count toward the twenty year term of a subsequently filed regular utility patent, so the principal advantage of a provisional patent application is the ability to get an early priority date without starting the twenty year patent term. This puts U.S. applicants on an even footing with non-U.S. applicants who can get a filing date in their home country that does not start the term of a U.S. utility patent.
An alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a petition requesting such a conversion within 12 months of the provisional application filing date.[2] However, if a provisional application is converted, rather than filing a non-provisional application claiming the benefit of the provisional application, the term of the resulting patent will be measured from the date of filing of the provisional patent application, rather than the date of conversion.
[1] In accordance with 35 U.S.C. §119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.
[2] 37 CFR §1.53(c)(3).