A. Types of Patent Applications

    There are two types of patent applications: Regular and Provisional. A "regular" patent application is basically any patent application filed that is not a "provisional" patent application. Only a utility patent application can be filed as either a provisional or a regular patent application (all design patent applications must be filed as a regular patent application).

    Once a regular patent application is filed, other regular patent applications can be filed naming the earlier application as the parent, provided the patent applications share "copendency". Copendency means that there is a common time when both where pending as the U.S. Patent & Trademark Office (USPTO). These later filed patent applications are referred to as: a "continuation" when no changes are made, a "continuation-in-part" when some new information is added, and a "divisional" when the USPTO has requested the parent application be divided among two or more separately patentable inventions.

B. Provisional Patent Applications

    Provisional patent applications were born of the GATT implementing legislation which became effective on June 8, 1995. In this regard, keep in mind that provisional patent applications are a creature of European patent law, where the requirements of disclosure are not as rigorous as those of U.S. patent law.

    U.S. patent law requires that a patent application provide an enabling disclosure whereby a person of ordinary skill in the relevant art is able to make and use the invention from study of the patent application disclosure without an undue amount of experimentation. This is the case whether the patent application is provisional or regular. Unless you provide a complete specification with detailed drawings every bit as complete as for a regular patent application, you risk that the claims of the later filed regular patent application will not be supported by the disclosure in the provisional patent application. Accordingly, preparation efforts should not ordinarily be too different between provisional and regular patent applications.

    It is imperative that a regular patent application be filed within one year of the date of filing the provisional patent application, wherein the regular patent application refers to the earlier filed provisional patent application as a continuation or continuation-in-part thereof. If the one year deadline falls on a holiday or a weekend, the regular patent application must be filed on the preceding day. If the regular patent application is not timely filed, the provisional patent application will lapse without any recourse to revive it.


C. Advantages of a Patent Application

    1. The Patent & Trademark Office will perform a thorough search (for all regular patent applications) to ascertain if anyone else has previously invented your invention.

    2. A patent application in many cases frees the inventor to seek-out licensees essentially without worry that a disclosure will adversely affect proprietary rights.

    3. A patent application is a formal document that sets forth the invention sufficient to allow someone ordinarily skilled in the art to which it pertains to make and use the invention. This completeness of description serves as a "constructive reduction to practice" which is legally equivalent to an "actual reduction to practice" (that is, a working prototype). Thus, a patent application is an excellent summary of the invention for use in a presentation package to potential licensees.

    4. Once a patent application is filed, the words "patent applied for" or "patent pending" may be affixed to the article being patented. This has a two-fold result: 1) serves as a "scarecrow" to stave off potential competitors; and 2) presents to the mind of the buying public the feeling that if the product is good enough for a patent, it must be good enough to buy.

    5. The patent laws allow not more than one year from the date of a public disclosure or offer for sale for a patent application to be filed, so by filing timely a statutory bar is prevented.

    6. In most foreign countries patent filing rights will be lost the moment an invention is publicly disclosed, unless (under international convention) a U.S. patent application was previously filed.