Talk:Provisional application

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[edit] Contradiction

It appears to me that this article contradicts itself. On the one hand, it says that: "A provisional application, as such, (...) can never become a patent". However, on the other hand, it says in the introduction that "A provisional application (...) is [an] (...) application for patent".

This is an important issue for the application of the Paris Convention, which provides:

"Article 4 A. (1) Any person who has duly filed an application for a patent (...) in one of the countries of the Union (...) shall enjoy, for the purpose of filing in the other countries, a right of priority (...)." (emphasis added)

--Edcolins 12:00, 20 January 2006 (UTC)

The article says a non-provisional application can be converted into a provisional application. I think this is not mentioned in the provided USPTO external link [1]. Is it correct? I understood that the opposite was correct!? --Edcolins 12:07, 20 January 2006 (UTC)

  • Practically speaking, a provisional application usually does not include any claims, thus is can never become a US patent. That said, you can ask that a provisional application become a non-provisional (if the provisional can stand on its own) and thus a converted provisional can become an actual patent. In any event, a provisional application is a bonafide US national patent application for all intents and purposes. The filing of a provisional application provides that a one year window to supply a formal patent application -- not unlike other continuation practice applications.
  • Second, a non-provisional MAY be converted to a provision, see 37 CFR 1.53(c)(2):
    "An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section".
  • Paragraph (b) is the application for a non-provisional. I'm having a hard time imagining that this comes up that often, but it is possible. mmmbeerT / C / ? 14:13, 20 January 2006 (UTC)

The reasons why a provisional US patent application cannot in itself become a patent are purely formal, and do not stem from missing claims. A provisional application may include claims, but it still cannot become a patent, because it is not a regular patent application. Important differences are that no regular examination procedure is performed for a provisional application by the USPTO, and it has "a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended." (USPTO quote - http://www.uspto.gov/web/offices/pac/provapp.htm). A provisional application does have many of the features of a non-provisional (regular) application, such as establishing a filing date, both for the US, and the Paris Convention priority year, and authorizing the use of "Patent Pending". -KØA 195.159.216.130 13:46, 10 February 2006 (UTC)

[edit] Error

There is an error (or at least lack of clarity) in the following sentence from the article: "If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period. However, the original priority date of any expired provisional applications will be forfeited."

If Provisional A is filed on day 1, and Provisional B is filed at 6 months, then if a PCT is filed at 13 months it will not benefit from the priority date of A ***or*** B. This is Paris Convention. Someone should find a source for this, and fix the above quoted sentence, because otherwise readers may well think that they can keep re-file the same provisional at 11 months, and be guaranteed of the priority date of the later-filed provisional. (They would lose, and get no benefit whatsoever.) —Preceding unsigned comment added by 85.250.137.224 (talk • contribs)

Thank you very much for your note. I have added a note in the article... This becomes very technical. Feel free to correct it or improve it, if you find an error or a way to make it more readable. There is certainly room for improvement. Thanks again. --Edcolins 20:28, 10 January 2007 (UTC)