• Jeff Streets

What is the Difference Between a "Patent Application" and a "Patent"?

Updated: Aug 22

Alternative Title: Don't embarrass yourself on Shark Tank by talking about your "provisional patent"!


Patent Application

A patent application is a document that has been filed at the United States Patent and Trademark Office (USPTO) and describes your invention. When a US patent application is filed at the USPTO, the USPTO will assign an application serial number and official filing date to the application. If the US patent application is filed using the USPTO's online filing system, either the Electronic Filing System (EFS-Web) or the new Patent Center, the application serial number and filing date are automatically generated within seconds after your patent application has been uploaded and submitted. At that very moment, the patent application is considered to be "pending" and the Applicant of the patent application may begin applying the term "Patent Pending" to products and services that are directed to the same subject matter as the patent application. The status of the patent application is "pending" until the patent application is either abandoned or becomes an issued patent.


Several days after filing a patent application, the USPTO will mail a Filing Receipt that confirms several details about the patent application that they received. In particular, the Filing Receipt will identify the inventors that were named at the time of filing, the identity of the Applicant (if different than the inventors), the title of the patent application, the serial number assigned to the patent application, the filing date when the patent application was received, and any correspondence address that is now associated with the patent application.


It is possible to identify a patent application by the format of the serial number. The serial number has the format of XX/###,###. The first two digits XX are the series code and the next six digits ###,### are the application number. For example, a patent application filed on March 17, 2022 was assigned application serial number 17/697,165. Patent application serial numbers are assigned in numerical order, so patent applications having lower serial numbers (including the series code) were filed before patent application having higher serial numbers.


On occasion it is important to remember that the physical offices of the USPTO are located in Alexandria, Virginia, which is in the Eastern Time Zone. Therefore, the filing date of a patent application that is filed online is determined from the viewpoint of the Eastern Time Zone. For example, if you submit a patent application online on December 31 of one year at 11:30 pm in the Central Time Zone, the patent application will be given a filing date of January 1 of the next year (i.e., the next day) because it was already January 1 on the East Coast when the patent application was submitted. Alternatively, you could file a patent application via Priority Mail Express® offered by the United States Postal Service at 11:30 pm on December 31 in the Central Time Zone and still receive a filing date of December 31 so long as the United States Postal Service marks your envelope with December 31 as the "date accepted" on the Priority Mail Express® label. This benefit is only available using Priority Mail Express® offered by the United States Postal Service (USPS) because the Patent Statute (at 35 USC 21) allows the Director of the USPTO to make rules governing the filing date and this is the rule that was established (37 CFR 1.6(a)(2) and 37 CFR 1.10) apparently on the basis that both the USPTO and the USPS are federal agencies.


Also note that US nonprovisional patent applications will be published 18 months after they the effective filing date, unless the Applicant requests nonpublication and meets some requirements. Anyway, you should be aware that a published patent application is not a patent! It may look similar to a patent, but it does not convey the right to stop others from practicing the claimed invention. Specifically, a published patent application will have a publication number with a format that is distinctly different from an issued patent (discussed below). A published patent application will have a publications with the format of US YYYY-####### A#. So, if you see a USPTO document that begins with a full year (i.e., 2008 or 2022) in the number, you know it is a published patent application and not a patent.


Patent

A patent application may or may not issue as a patent following a process of examination. There are numerous requirements that must be met before a US patent will be granted. A limited list of the patentability requirements includes a written description, an enabling disclosure, and claims directed to an invention that is new, useful and nonobvious to a person having an ordinary level of skill in the relevant art on the effective filing date of the associated patent application. Each of these requirements are worthy of separate articles and are matters of focus for patent attorneys throughout their careers.

A US patent will not issue without payment of an issue fee. Even if the invention that is disclosed and claimed in a patent application meets all of the patentability requirements, a patent will not issue until the issue fee has been paid. A US utility patent number will have a format of ##,###,###. For example, the USPTO issued US Patent 10,000,000 on June 19, 2019. By contrast, a US design patent will begin with the letter "D", a plant patent will begin with the letters "PP" and a reissue patent will begin with "RE." These patent number formats are described further at the following link: https://www.uspto.gov/patents/apply/applying-online/patent-number Furthermore, a patent number may include a "Kind Code" after the numerical portion. A "Kind Code" includes a letter, and often a number, to identify the kind of patent document and/or the level of publication. For example, the kind code "B1" indicates that the patent was published with no previously published pre-grant publication, whereas the kind code "B2" indicates that the patent was published with a previously published pre-grant publication. Therefore, if a US patent issues with a "B2" kind code, then there is a corresponding publication of the pending patent application. For assistance identifying the meaning of a particular USPTO Kind Code, use the following link: https://www.uspto.gov/learning-and-resources/support-centers/electronic-business-center/kind-codes-included-uspto-patent The matter can become rather complex since the meaning of some Kind Codes have changed over the years.


An issued US patent gives the owner of the patent the right to sue an infringer for damages and/or a court-ordered injunction against further infringement of the claims of a patent. An infringer is a person or company that "without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent" (35 U.S.C. 271(a)) or "actively induces infringement of a patent" (35 U.S.C. 271(b)). There are other specific actions and conduct that may be deemed infringement in a particular situation, so it is recommended to review 35 U.S.C. 271 or contact a patent attorney for further advice about infringement. A patent owner may also license their patent rights to others so that they (i.e., the licensee) may practice the patented invention with authority from the patent owner (i.e., the licensor) in exchange for a license fee. Typically, the licensor that receives all of the rights in a patent or even all of the rights to practice a particular aspect of a patent may be considered an "exclusive" licensee and may also have the right to use infringers or their exclusive rights.


So, What is Wrong with Saying "Provisional Patent"?

There is no such thing as a "provisional patent". An inventor may file a "provisional patent application", but that provisional patent application expires exactly one year after filing, will never be examined, and can never issue as a patent. You may then wonder what value there is in filing a provisional patent application. The simple answer is that filing a provisional patent application is evidence that you filed a particular patent application describing a particular invention on a particular filing date. In order to take advantage of a pending provisional patent application, a nonprovisional patent application must be filed with a priority claim to the provisional patent application before the provisional patent application expires on its one-year anniversary. A successful priority claim to the provisional patent application will give the nonprovisional patent application an "effective filing date" that is the filing date of the pending provisional patent application. The use of a provisional patent application can be useful if your invention is still being fully developed or if you are about to have a public disclosure of your invention.


So, please, don't refer to a "provisional patent." While people may understand that you are referring to a "provisional patent application", referring to a "provisional patent" is inaccurate and may give others the impression that you don't really understand the fundamentals of patent law. Using the appropriate terminology will gain you some credibility with many, including the "Sharks" on Shark Tank.


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