James R. Barney


In 1994, Congress enacted the Uruguay Round Agreements Act (URAA) in an effort to bring the United States into conformance with international patent standards and “place domestic applicants on an equal footing with foreign applicants.” The URAA introduced substantial changes in U.S. patent law. One of the most significant changes was the amendment of 35 U.S.C.A. § 111 (West 1994) to allow inventors (both domestic and foreign) to file a special application: the provisional patent application.

In the years following ratification of the URAA, much has been written about the various nuances and intricacies of filing provisional patent applications in the United States. In the midst of this voluminous discourse, it has been difficult for the conscientious practitioner to determine exactly what to say to a client who asks, “Should I file a provisional application?” The purpose of this Note is to provide a quick and practical guide to the benefits and shortcomings of filing provisional patent applications, including the use of provisional applications as part of an overall patent filing strategy. Part II will provide a brief overview of provisional applications and how they differ from nonprovisional applications. Part III will evaluate the benefits of filing provisional applications. Part IV will discuss the disadvantages, including potential pitfalls for the unwary. Finally, some general conclusions will be drawn in Part V regarding the use of provisional applications.