Provisional Application and why it is needed
Providing a provisional application for an invention (Provisional Application) to the US Patent Office (USPTO) is a very popular step among developers, especially at the stage of planting or start-up. This action can be likened to taking a place in a long line when you say “I will be back soon” and go about their business. If you did not return too late, the queue, although without much enthusiasm, will turn you back. Also with a preliminary application - within 12 months after filing, you can return to the application and give it a turn.
Until recently, the filing of a patent application in the USPTO was allowed only on behalf of the author or group of authors of the invention and was not allowed on behalf of others, including legal entities. To transfer the rights to an invention to a legal entity, it was necessary to file an additional petition (Assignment). From September 16, 2012, in accordance with the Leahy-Smith America Invents Act (AIA) [1], it became possible from the very beginning of the patenting process to indicate to the applicant a legal entity, including when submitting a provisional application. However, this can be done only with a “paper” filing of the application, since the indication of a legal entity as an applicant is provided only in the form of AIA14 (Application Data Sheet), which can be used for preliminary and for ordinary applications for inventions, and is not provided in the form of SB16 ( Provisional Cover Sheet), with which the preliminary application is filed electronically through the EFS-Web system [2].
Any person from any country can physically make an electronic filing of a preliminary application. EFS-Web is fairly easy to use and stable. The amount of the patent fee is determined by the built-in calculator directly in the process of filing and for small businesses it usually ranges from 130 to 200 dollars, depending on the number of application pages. You can pay in several ways, most conveniently by credit card. Proving the status of a small business is not required, it is enough to declare it by checking the appropriate box.
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A preliminary application must contain, at a minimum, a description in any natural language and an SB16 form in English. Unlike a full-fledged patent application, there are no special requirements for the description of the provisional application. For example, material is suitable in the format of a scientific article, a dissertation author's abstract, an explanatory note from an R & D report, etc. Preferably, the application also contains illustrations if they contribute to the understanding of the invention. Illustrations should be black and white contrasting images. Photos makes sense to rasterize in a special way so that they are suitable for printing and photocopying without significant loss of information. The description and illustrations should be submitted in .pdf format with embedded full font sets. The SB16 form can be downloaded on the EFS-Web.
If a preliminary application is to be obtained, it must be converted into a regular patent application (Non-provisional Application or Utility Application). In this case, the priority of the application-successor and the date of commencement of the patent shall be established by the date of filing the provisional application. If the preliminary application was filed in a language other than English, then in subsequent manipulations before the expiration of the 12-month period it will be necessary to submit an English translation of the application itself and the materials included in the application by reference. Any subsequent action with a preliminary application will require the involvement of a US patent agent or patent attorney (attorney). If you do nothing with the preliminary application, after 12 months it becomes practically useless.
A preliminary application does not pass the examination and is not published, but the applicant may receive a certified copy of the application with the payment of the corresponding fee. A certified copy of the application can be used as a means of fixing the contribution of the parties when creating a joint business, as an annex to an investment prospectus, as evidence of a scientific primacy, etc.
A provisional application is a US national patent application and may serve as a basis for filing international patent applications and conventional patent applications in other countries while maintaining the priority date of the provisional application.
A preliminary application allows to use the fact of its filing in an advertisement and to apply a warning mark “patent pending” on products within 12 months from the date of filing the application.
The ease of filing a preliminary application makes it an economical and effective tool for early patenting. However, it should be remembered and its inherent limitations. For the provisional application can not get priority on any previously filed application.
Preliminary application can not be changed. Incomplete disclosure of the invention in the descriptions and illustrations of the provisional application may lead to the fact that the claims of the application-heiress, the features of which are not disclosed in the preliminary application, will have a later priority date for the examination corresponding to the conversion date, which may lead to a later start date patent action.
For an invention created in Russia, filing a provisional application in the USA (as well as filing an application in any other state bypassing Rospatent) violates the current legislation of the Russian Federation (Article 1395 of the Civil Code of the Russian Federation. Patenting of inventions or utility models in foreign countries and international organizations) and creates the risk of imposing a fine under Art. 7.28 of the Administrative Code of the Russian Federation (Violation of the established procedure for patenting industrial property objects in foreign countries) - for citizens in the amount of from one thousand to two thousand rubles, for legal entities - from fifty thousand to eighty thousand rubles; and if the patent application contains information constituting a state secret, also the risk of criminal prosecution. It is clear that the creation of an invention on the territory of Russia in this case, the state will still have to be proved.
[1] en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act
[2] efs.uspto.gov/efile/portal/efs-unregistered
Who can submit a preliminary application
Until recently, the filing of a patent application in the USPTO was allowed only on behalf of the author or group of authors of the invention and was not allowed on behalf of others, including legal entities. To transfer the rights to an invention to a legal entity, it was necessary to file an additional petition (Assignment). From September 16, 2012, in accordance with the Leahy-Smith America Invents Act (AIA) [1], it became possible from the very beginning of the patenting process to indicate to the applicant a legal entity, including when submitting a provisional application. However, this can be done only with a “paper” filing of the application, since the indication of a legal entity as an applicant is provided only in the form of AIA14 (Application Data Sheet), which can be used for preliminary and for ordinary applications for inventions, and is not provided in the form of SB16 ( Provisional Cover Sheet), with which the preliminary application is filed electronically through the EFS-Web system [2].
Any person from any country can physically make an electronic filing of a preliminary application. EFS-Web is fairly easy to use and stable. The amount of the patent fee is determined by the built-in calculator directly in the process of filing and for small businesses it usually ranges from 130 to 200 dollars, depending on the number of application pages. You can pay in several ways, most conveniently by credit card. Proving the status of a small business is not required, it is enough to declare it by checking the appropriate box.
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Requirements for pre-application
A preliminary application must contain, at a minimum, a description in any natural language and an SB16 form in English. Unlike a full-fledged patent application, there are no special requirements for the description of the provisional application. For example, material is suitable in the format of a scientific article, a dissertation author's abstract, an explanatory note from an R & D report, etc. Preferably, the application also contains illustrations if they contribute to the understanding of the invention. Illustrations should be black and white contrasting images. Photos makes sense to rasterize in a special way so that they are suitable for printing and photocopying without significant loss of information. The description and illustrations should be submitted in .pdf format with embedded full font sets. The SB16 form can be downloaded on the EFS-Web.
So, what is next?
If a preliminary application is to be obtained, it must be converted into a regular patent application (Non-provisional Application or Utility Application). In this case, the priority of the application-successor and the date of commencement of the patent shall be established by the date of filing the provisional application. If the preliminary application was filed in a language other than English, then in subsequent manipulations before the expiration of the 12-month period it will be necessary to submit an English translation of the application itself and the materials included in the application by reference. Any subsequent action with a preliminary application will require the involvement of a US patent agent or patent attorney (attorney). If you do nothing with the preliminary application, after 12 months it becomes practically useless.
What does a preliminary application give?
A preliminary application does not pass the examination and is not published, but the applicant may receive a certified copy of the application with the payment of the corresponding fee. A certified copy of the application can be used as a means of fixing the contribution of the parties when creating a joint business, as an annex to an investment prospectus, as evidence of a scientific primacy, etc.
A provisional application is a US national patent application and may serve as a basis for filing international patent applications and conventional patent applications in other countries while maintaining the priority date of the provisional application.
A preliminary application allows to use the fact of its filing in an advertisement and to apply a warning mark “patent pending” on products within 12 months from the date of filing the application.
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The ease of filing a preliminary application makes it an economical and effective tool for early patenting. However, it should be remembered and its inherent limitations. For the provisional application can not get priority on any previously filed application.
Preliminary application can not be changed. Incomplete disclosure of the invention in the descriptions and illustrations of the provisional application may lead to the fact that the claims of the application-heiress, the features of which are not disclosed in the preliminary application, will have a later priority date for the examination corresponding to the conversion date, which may lead to a later start date patent action.
For an invention created in Russia, filing a provisional application in the USA (as well as filing an application in any other state bypassing Rospatent) violates the current legislation of the Russian Federation (Article 1395 of the Civil Code of the Russian Federation. Patenting of inventions or utility models in foreign countries and international organizations) and creates the risk of imposing a fine under Art. 7.28 of the Administrative Code of the Russian Federation (Violation of the established procedure for patenting industrial property objects in foreign countries) - for citizens in the amount of from one thousand to two thousand rubles, for legal entities - from fifty thousand to eighty thousand rubles; and if the patent application contains information constituting a state secret, also the risk of criminal prosecution. It is clear that the creation of an invention on the territory of Russia in this case, the state will still have to be proved.
[1] en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act
[2] efs.uspto.gov/efile/portal/efs-unregistered
Source: https://habr.com/ru/post/288390/
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