Patent application filing basics

published in McAfee & Taft tIPsheet | July 5, 2018

By Ryan N. Cross

In preparing a patent application, one of the basic questions to be addressed is the type of application to file. Applicants are faced with the choice of filing a non-provisional application, a provisional application or a Patent Cooperation Treaty (PCT) application. The mere mention of these choices often encounters a blank stare as the words fall meaninglessly on the applicant’s ears. However, besides some esoteric terminology, the basic concepts of the filing options are not that difficult to grasp.

A non-provisional application is what most people think of as a patent application. It is a patent application filed with the United States Patent Office, which can issue as a patent. The Patent Office examines the application to determine whether the invention is patentable. Filing a non-provisional application establishes your priority date. Patent applications filed after your priority date are not “prior art” references that can be used against your application during examination. Additionally, since the United States is now a first to file system, you are entitled to obtain a patent over another person whose application has a priority date after your priority date even if they have an invention date earlier than yours.

A provisional application is a United States patent application, which is not examined by the United States Patent Office and does not issue as a patent. It has a one-year life. By the end of its life, you must file a non-provisional application claiming priority to the provisional application if you wish to obtain a patent on your invention.

However, filing a provisional application also establishes your priority date for obtaining a patent. Ideally, the provisional application looks exactly like the non-provisional application eventually filed. In practice, this rarely happens. However, getting all the information in the provisional application to explain the invention and its operation is important because any additional information added into the non-provisional application will not receive the priority date of the provisional application.

A PCT patent application is similar to a United States non-provisional application but is filed with World Intellectual Property Organization (WIPO). Filing a PCT application will establish your priority date and is generally appropriate when you would like to file in other countries in addition to the U.S. While PCT applications undergo an examination, WIPO does not issue a patent. Rather, within about 30 months from the applications priority date, national stage applications must be filed in the countries you wish to obtain a patent. The national stage countries also examine the application and can issue patents. The national stage countries receive a copy of the WIPO examination but are not bound by its results.

Any of these types of applications may serve as the first filing. However, a United States provisional application cannot claim priority to a PCT Application or a non-provisional application. For example, you cannot file a PCT application and then file a United States provisional application at the national stage. Additionally, if a United States provisional application or United States non-provisional patent application is the first filed, a PCT patent application must be filed within one year of the United States application priority date for the PCT patent application to receive the benefit of the United States application priority date.

Patent attorneys familiar with the PCT and United States processes can develop strategies for their clients that will allow clients to defer costs while optimizing the time between the filing of the application, examination and grant of a patent. Which application best fits your need and the strategy for filing your applications are questions that should be discussed with your patent counsel.

Please be aware that this publication does not contain legal advice. The views expressed in the article are provided for informational and discussion purposes and do not necessarily reflect the views of the author or of McAfee & Taft A Professional Corporation.