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Don Kelly Answers Questions About The Provisional Patent Application (PPA)

Don Kelly, former Director of Independent Inventor Programs for the Office of the Commissioner of the U.S. Patent and Trademark Office (USPTO)

The National Congress of Inventor Organizations (NCIO) asked Don Kelly to answer a few questions that we frequently receive about the Provisional Patent Application (usually referred to as the "PPA"). At the time of the interview, Don Kelly was Director of Independent Inventor Programs for the Office of the Commissioner of the U.S. Patent and Trademark Office (USPTO).

For those of you who aren't familiar with the "PPA", here is a brief introduction. In 1995 as part of the GATT Treaty, the U.S. Patent and Trademark Office made changes to the U.S. Patent System. One of these changes was the duration of a patent to last for a period of "20 years from the date of filing" instead of the previous "17 years from the date of the patent's issue date". It also implemented the use of the Provisional Patent Application (PPA). In essence, a PPA is a preliminary patent application which lasts for up to one year. The PPA can be filed directly by the inventor without hiring a patent attorney, it only costs $110 (as of 2010) to file with the USPTO, and it allows the inventor to legally state that he/she is "patent pending".

(Note: The term "non" provisional patent application refers to a standard patent application, and PPA refers to the provisional patent application.)

GNASS/NCIO: What happens if the 1 year PPA deadline passes, and the (standard) patent isn't applied for?

KELLY/USPTO: When provisional patent applications (PPAs) are filed, the applicant has one year within which to file the non-provisional (standard) patent application to gain the benefit of the earlier filing date. In other words, when the year passes following the filing of the provisional patent application (PPA), a subsequently filed non-provisional (standard) application would not benefit from the earlier provisional application (PPA) filing date. This could happen, for example, in the case where the inventor discovers that the invention needed more development before continuing.

So, the only real loss in not filing the nonprovisional patent application (PPA) within the one-year period is the loss of the earlier filing date. Of course, applicants must be alert to the problem that arises if the invention is made "public" more than a year before the filing of the non-provisional (standard) patent application. This would constitute a bar to patentability.

GNASS/NCIO: Can someone still apply for a (standard) patent after the 1 year period? Or does he lose the idea? Or can he still continue to use the "first-to-invent" system by using log books and confidentiality agreements?

KELLY/USPTO: Yes, after the one-year passes, someone (namely, the inventor) still can apply for the patent. She/he does not lose the idea, except in the case I mentioned where some activity poses a bar to patentability. And, yes, the system in the United States continues to be "first to invent," where log books or journals may be used to establish certain critical dates.

GNASS/NCIO: Can a PPA be renewed after 1 year?

KELLY/USPTO: There is no "renewal" of a provisional patent application (PPA).

GNASS/NCIO: Would the rule of getting a patent 1-year from the public display date also apply? For example, if someone files a PPA, and displays it 6 months later, but doesn't file for a patent within the year after the PPA filing, would he be required to file for a patent 1 year after the public display date?

KELLY/USPTO: If the provisional patent application (PPA) is not followed up with a non-provisional (standard) patent application, then the provisional patent application (PPA) loses all of its priority date effect. In other words, the provisional patent application (PPA) filing date would no longer be the effective filing date of the subsequent non-provisional (standard) patent application. Any public disclosure, sale, or offer for sale that occurs more than one year before the filing of the non-provisional (standard) application.

GNASS/NCIO: Does the 20 years patent term start on the date of the PPA application or the patent application 1 year later?

KELLY/USPTO: The 20-year term begins with the filing of the non-provisional (standard) patent application.

GNASS/NCIO: What happens if changes are made to the original version of the PPA? Does a new PPA need to be filed, and if so, would it be considered an amendment or a new PPA? And which date would apply, the date of the initial PPA or the updated PPA?

KELLY/USPTO: The purpose of the provisional patent application (PPA) is to establish an early filing date that will stand as the effective filing date for the invention it discloses. At that point, the patent is pending, but the provisional patent application (PPA) is not examined and cannot be amended. If the invention changes, the early filing date remains effective only for the information that has not changed. If a new provisional patent application (PPA) is filed to cover the invention, the non-provisional (standard) patent application must be filed within one year of the date of filing of the new provisional patent application. In other words, the earlier filing date is lost. This could have adverse consequences if damaging public disclosures have taken place.


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