Maybe some innovative SDopers can refresh my memory! I was reading at the USPTO website about utility patent applications of which there are two types: Provisional and Non-Provisional. The latter is your straight-forward patent application. However, the former is used to submit “something” in order to get the benefit of as early a filing date as possible…with intentions of filing a Non-Provisional (i.e.: the real McCoy) within one year.
My question is this: The USPTO webiste says a Provisional application is not examined on its merits. In other words, it’s not given a complete and thorough review. However, what does it get, as far as being examined??? Does the Examiner merely create a list of prior art close to whatever is claimed in this informal application? I can’t recall…
IANAPA (patent agent or attorney), but I have been looking into this myself recently. This page on the USPTO website talks about utility patent applications and states that
My understanding is that the provisional application is basically kept on file for 12 months (without any examination) while you prepare (or examine the commercial benefits of) filing the full non-provisional application. This is cheaper and way easier than the real application, and allow you to use the term “patent pending”. When you do file the full applcation, you can also claim the date of the provisional application as the offical filing date of the patent. All of this is also located on the website I gave above. I’m pretty sure that in order to get an examiner to do a search of the prior art you need to fork over the full patent application fee to cover the hours that they will spend working on it.
The use of “patent pending” and the transferability of the filing date appear to be the major differences between the provisional application and the “document disclosure” process. It is my understanding (someone please correct me if I am wrong on this part) that the provisional application could be used as part of a proof of invention if there was a conflict in the interim period before the full patent application was filed.
I believe you are correct, and it was my suspicion that it was used to give the inventor(s) a chance to test market with the benefit of protection of a patent pending statement. And, you are correct about the benefit of an earlier filing date, if the non-provisional is filed in a timely fashion. And, yes, it does prove diligence on behalf of the inventive party, etc…
But, also! Get this! If you go to test-market first, and then file…it is possible that this can then cause your patent application to be rejected since it was in use and known to the public. (Rejections can be formed on bases other than a printed reference.) I cannot recall, but there may be a 1-yr grace period for those daring (and unwise) enough not to file a provisional application BEFORE test-marketing.
I meant to add that it is interesting to note that: A product, such as Coca-Cola, which has never been patented cannot all-of-a-sudden file for a patent since the product is known and in-use by the public. For my own curiosity, I will try to find the exact wording for this type of rejection. For those legal minded Dopers, it may be a USC 101 rejection, IIRC?