Provisional patent application

A provisional patent application is a simplified application that allows a filing date to be secured at lower cost, without examination and without any obligation to draft claims. It has existed in the United States since 1995 and was introduced into French law by the PACTE Act, for applications filed on or after 1 July 2020. In both systems, it constitutes a regular first filing within the meaning of Article 4 of the Paris Convention, capable of founding a right of priority.

The provisional application under French law

A French provisional application may be filed with a mere description, without claims. It has a lifespan of twelve months. During that period, the applicant may request its conversion into an ordinary patent application by filing claims, in which case the original filing date is preserved. It may also be used as the basis for a priority claim in a later filing in France or abroad. If neither step is taken, it is deemed withdrawn. Like any application filed in France, it is subject to the prior review carried out for national defence purposes.

The US provisional application

In the United States, a provisional application filed with the USPTO is neither examined nor published as such. It must be followed, within twelve months, by a non-provisional application claiming its benefit, failing which it is abandoned. The term of the patent issuing from the non-provisional application is calculated from the filing of the latter, so that the provisional period does not reduce the term of protection.

Limits of the priority so obtained

Priority is valid only for the invention disclosed in the provisional application. The European Patent Office and the courts strictly assess whether the invention is the same in the first filing and in the later application, the claimed subject matter having to be derivable directly and unambiguously from the first filing. A provisional application drafted in haste, in the form of a scientific article or a slide presentation, exposes the holder to loss of priority and, if the invention has been the subject of a disclosure in the meantime, to its own publication being cited as prior art. The saving in time and cost must be weighed against that risk.

Key points

The provisional application allows a filing date to be secured quickly, but it protects only the invention it describes with precision. It is useful where disclosure of the invention is imminent, for example before a publication or a conference, provided that the description is complete and covers the contemplated variants. The twelve-month deadline should be docketed upon filing and the complete application prepared in good time, in France as abroad.

---

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

Patent litigation · Unified Patent Court · UPC case law · Tell us about your situation