Under the General Agreement for Trade and Tariffs (GATT), United States Law now provides the option to file a provisional application. Once again, as previously set forth, the filing of a provisional application does not generate any patent rights. Under the 2011 Leahy-Smith America Invents Act, more inventors will likely file provisional patent applications since the United States became a first to file jurisdiction rather than a first to invent jurisdiction.
Filing a provisional application will establish and allow:
a) A United States filing date and an International Priority date showing the invention was conceived before the filing of the provisional application in the USPTO.
b) “Patent pending” can be attached to the invention.
c) The state-of-the-art search can be conducted after the filing of the provisional application.
d) Reduced USPTO filing fees are associated with a provisional application.
Consequences of filing a provisional application:
a) The USPTO does not examine a provisional application.
b) Filing a provisional application commences the one year statutory period for filing both the United States and international utility patent applications flowing from the provisional application. If the United States and international utility patent applications are not filed before the expiration of one year after the filing of the provisional application, the United States or international application cannot claim priority to the provisional application.
c) Depending upon the international jurisdictions selected, the filing and prosecution expenses associated with international and foreign jurisdiction applications can range from US$60,000.00 to US$390,000.00 or more per patent application.
d) When filing a provisional application, United States law mandates that the provisional application conform to the relevant statutory patent law.