Nonprovisional patent application

This does not mean that a provisional patent application will never be publicly available. In the case in which a later-filed nonprovisional patent application is published by die USPTO and that later-filed patent application claims priority to die provisional application, then that provisional patent application is available to the public as part of that patent application s file history. 

U.S. nonprovisional patent applications terms are normally 20 years from the date of their filing. A provisional patent application can establish the filing date of the subject matter disclosed in the application but does not start the 20-year clock ticking. One way of looking at the provisional patent application is that it effectively extends a 20-year patent term up to a 21-year patent term.16... 

Let s start with the most recently filed patent application and then work backward. For compound D, there was no provisional patent application that was filed containing its structure. Rather, the compound made its first appearance in the nonprovisional patent application therefore, it properly claims priority to a filing date of July 29, 2009. The third (last) provisional application that was filed contained compound C only, and it was filed on April 15, 2009, so compound C s effective priority date is April 15,2009. The second provisional application that was filed contained compound B only, and it was filed on December 29, 2008, so compound B s effective priority date is December 29, 2008. 

Notice the nonprovisional patent application needs only to refer to the provisional patent applications to which it claims earlier priority it does not need to explain which provisional patent application supports what subject matter in the nonprovisional patent application. 

Now that we ve reviewed some of the basic types of patent applications that can be filed in the United States (provisional, nonprovisional, nonprovisional entering through the PCT process) let s step in farther to see what happens once a nonprovisional patent application arrives at the USPTO. Whether an application arrives at the USPTO from the PCT as part of the national stage entry process or whether it arrives directly from an applicant to the USPTO, the first step taken by the office is to take a quick look at the patent application and make sure that it is complete.25... 

As a preliminary matter, the nonprovisional patent application, whether filed in the United States directly or when it enters the U.S. national stage via the PCT, requires that all applicants must be inventors and all of the inventors names and addresses must be provided with the patent application. This is in contrast to many other patent jurisdictions, where the applicant can be a business entity, such as the company an inventor may have assigned his invention to. Additionally, all nonprovisional patent applications require an oath or declaration of inventorship to be included with the patent application or submitted within the prescribed time thereafter. The requirements of the oath or declaration of inventorship are explained in 37 CFR 1.63-1.69. Initial entry of patent applications to the United States from the PCT are governed by the Code as outlined in 35 U.S.C. 371 National stage Commencement. 

So if an applicant files a provisional patent application on June 1,2007, and files a nonprovisional patent application in the United States on May 28, 2008, that claims priority from the provisional patent application, then, under normal circumstances the patent application will be published around December 1, 2008. The application that is published is the nonprovisional patent application and not the provisional application. However, on the day the nonprovisional patent application is published, the provisional application together with the patent file history (including the formal correspondence between the applicant and the patent office) become available to... 

FIGURE 2.9 Claims from first nonprovisional patent application. 

FIGURE 2.10 The first amended claim set in the nonprovisional patent application and the new claims to the canceled subject matter in two separate divisional application filings. 

The specific circumstances under which corrections may be made are provided for in 37 CFR 1.48 and in brief depend on whether the correction is after the oath/declaration of inventorship have been filed (1.48 a), the correction is due to a change in claim scope during prosecution of a nonprovisional patent application (1.48 b and c), or the correction is adding or deleting inventors from a provisional application (1.48 d and e). 

The claims in a patent define the scope of the invention and therefore set the parameters for the right to exclude others from making, using or selling in the United States or importing into the United States.1 Every nonprovisional patent application must... 

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