Intellectual Property ◾ 213
These pre-ling disclosures, although protected in the U.S., may preclude
patenting in foreign countries.
Unlike a non-provisional patent, the provisional patent is led without
any formal patent claims, oath, declaration, information disclosure, or prior
art statement. The written description of the invention and any drawings
necessary to more fully understand the invention must be provided for in an
application for a provisional patent.
If either of these two items is missing or incomplete, your application will
be rejected and no ling date will be given for your provisional application.
10.4.2 Advantages and Disadvantages
There are several advantages and disadvantages to provisional patents—the
reader is well advised to seek competent patent counsel. A well-written
provisional patent application should satisfy all formal and substantive legal
requirements of the patent law. A provisional patent application should
always be as complete as possible as compared to a non-provisional patent
application; however, you will not be required to le any claims. You can
conveniently use that grace year to collect additional data that may form a
basis for eventual claims.
The entrepreneur/inventor must carefully balance the plusses and
minuses of provisional patents, as shown in Table10.4.
Table10.4 Advantages/Disadvantages of provisional patents
Advantages Disadvantages
Relatively simple and inexpensive.
The specications will not be examined.
More comprehensive disclosures can be
followed at later time.
A provisional application automatically
becomes abandoned when its
pendency expires 12 months after the
provisional application ling date by
operation of law.
Can claim priority to multiple provisional
applications, as measured from the
earliest led application.
Provisional applications will not
mature into a granted patent without
further submissions by the inventor.
Once docketed, the term “Patent
Pending” can be used for business
purposes.
If not followed by a utility ling within
one year, the inventor must cease
using Patent Pending to avoid charges
of false marking.
The effective patent term is 21 years from
ling date of the provisional application.
Examination is delayed up to one year.