Understanding the U.S. Patent Filing System: Provisional, Non-Provisional, and PCT National Stage Entry

I. Provisional Patent Application

A Provisional Patent Application is filed primarily to secure an early filing date. It does not undergo substantive examination. If a corresponding non-provisional (regular) application is not filed within 12 months of the provisional filing date, the application is automatically deemed abandoned. Note that provisional applications are not available for design patents.

Since 1995, this system has been in effect to balance the benefits given to foreign-priority applications. While a non-provisional application can claim the benefit of the earlier provisional filing date, the patent term is calculated from the filing date of the non-provisional application, not the provisional one.

This route allows for securing a U.S. filing date at a relatively low cost. While a detailed description must be submitted, unlike a non-provisional application, there is no requirement to include claims. Furthermore, it does not require an oath/declaration or the filing of an Information Disclosure Statement (IDS) to disclose prior art. If a non-provisional application is filed within 12 months, the claims supported by the provisional disclosure will receive the benefit of the earlier provisional filing date.

▶ Advantages of a Provisional Application

• Urgent Deadlines: If the one-year grace period under 35 U.S.C. § 102(b) is about to expire and there is insufficient time to draft a full specification, a priority date can be secured quickly without claims and at a lower cost. It can also be filed in languages other than English without an immediate translation. (However, a translation must be submitted within a designated period when filing the subsequent non-provisional application).

• Preventing Third-Party Interference: When filing in the U.S. within one year of a foreign filing, there is a risk that a third party might file in the U.S. in the interim. Simultaneously filing a U.S. provisional application alongside the foreign application can prevent this disadvantage.

• Consolidating Improvements: An applicant can file an initial provisional and subsequent provisionals for improvements. By merging these into one non-provisional application within one year of the first filing, the applicant can secure the earliest possible priority dates for various parts of the technology in the most advantageous way.

• Strategic Delay: It effectively defers the examination of the invention for one year, providing time to monitor competitors or verify the commercial viability of the invention.

II. Non-Provisional Patent Application

In contrast to the provisional application, this is the standard procedure performed to obtain a patent. It requires the submission of an oath or declaration, a specification, claims, and an Information Disclosure Statement (IDS). To claim priority based on a foreign application, the U.S. application must be filed within 12 months for utility patents and within 6 months for design patents from the foreign filing date.

▶ Utility Patent This corresponds to Korea's "Patent" and "Utility Model." It covers any new and useful process, machine, manufacture, or composition of matter, as well as any new and useful improvement thereof. Generally, the term "patent" refers to a utility patent.

▶ Design Patent This covers new, original, and ornamental designs for an article of manufacture. It does not include inventions related to structural or functional characteristics. A design patent application must be drafted with a single claim, and independent or distinct designs must be filed separately. While design rights are separate from patents in Korea, they are treated as a type of patent in the United States.

III. National Stage Entry of PCT Patent Application

Based on the Patent Cooperation Treaty (PCT) signed in 1970 and effective since 1978, this allows an applicant to file a single PCT application with their national patent office (Receiving Office) and then enter the "national stage" of desired member countries within a specified period. The PCT filing date is recognized as the filing date in all designated countries.

The PCT does not grant a "world patent"; rather, it provides a centralized convenience so that one international filing has the effect of filing in all member states simultaneously. To claim priority from a previous filing, the PCT international application must be filed within 12 months of that priority date.

▶ U.S. National Stage Entry The U.S. national phase begins by submitting the required documents—such as the basic filing fee, a copy of the international application, and an English translation (if filed in another language)—to the USPTO within 30 months of the priority date. Up to this point, procedures are uniform under the PCT; thereafter, the application proceeds independently according to U.S. domestic law.

Patent Application Process via KORUS PATENT

KORUS PATENT files all provisional, non-provisional, and PCT national stage applications electronically via the USPTO’s Patent Center. Progress can be monitored in real-time through this system.

• Filing requests: Available via phone or email

• Required documents: Send via email or mail.

• Timeline: Electronic filing is completed within 5 business days upon receipt of preparatory documents and confirmation of payment. (If KORUS PATENT performs the English translation of a foreign specification, an additional 3–4 weeks are required).

• Immediate Confirmation: Since we utilize 100% electronic filing, the application number and filing acknowledgement receipt are issued by the USPTO immediately upon filing.

▶ Step-by-Step Procedure

1. Request for Patent Application, by Client

2. Guidance on Required Documents & Fees, by KORUS

3. Transfer of Documents & Remittance to KORUS, by Client

4. Completion of Electronic Filing, by KORUS

5. Issuance of Filing Acknowledgement Receipt with Application Number, by USPTO

6. Completion Reporting & Delivery of Filing Documents/Receipt to the Client, by KORUS