The provisional application cannot claim the benefit of any other application. A complete regular application may, however, be converted into a provisional application under certain conditions, provided that the application has not been abandoned, the issue fee has not been paid, and the conversion is effected prior to one year after the filing date of the complete nonprovisional application. Provisional applications are not subject to U.S. Patent and Trademark Office examination. Only after a complete application has been filed will examination be initiated. As a result, information disclosure statements identifying prior art that might be material to a decision on patentability should not be submitted.
Provisional applications can be extremely helpful under a number of circumstances.
For example, if a publication is to occur within a few days and forfeiture of foreign rights is not desired, a provisional application can be filed prior to the date of publication and a complete nonprovisional application can be filed within one year thereafter, thereby avoiding the forfeiture. Also, owners of inventions who are not certain about the commercial potential and value of an invention may wish to minimize the expense of preserving rights therein by filing a provisional application. One problem that occurs frequently is that the provisional application, which was filed with a somewhat sketchy disclosure and no claims, is the subject of a later-filed complete application based upon the provisional. With the benefit of additional technical information generated in the intervening period between the two filings or the need for the first time to claim the invention, serious issues as to whether the provisional had adequate disclosure to satisfy the statute s disclosure requirement regarding broadening or to support the breadth of the claimcan arise. This results in uncertainty as to whether the effective date of the added increment of disclosure or claiming is the date when the provisional application was filed or when the actual complete application was filed.