Thoughts on Provisional Patents
Should You Use Them?
Let's Talk About It
For starters you should know that there is no unanimity regarding the use of a provisional. In fact my views on this have changed several times during my practice. At first I was very skeptical about ever using provisionals - but now use them routinely.
Although I still have reservations about the right way to use and especially how to write them, I have come around to the view that the proper strategic use of this type of application can be very effective. I will get into all of those considerations - but let's first talk some background and define what a provisional patent application is.
The US Patent and Trademark Office (USPTO) has offered this option since 1995 (June 8th). It was designed to give patent applicants a lower-cost initial filing in the United States. Notice I said initial filing. There is no assurance the overall cost of obtaining a final patent will be lower. In fact it could be slightly higher. But in many cases it has resulted in cost savings because the applicant has decided later, for either market or technical reasons, to not file a follow-up regular application and thus did save overall cost. This is the "poker" approach to filing a patent - ante up a smaller fee for a provisional and then you get to look at a few more cards before you make you decision to file the more expensive non-provisional.
Here is the way you file one:
The applicant files an application under 35 U.S.C. 111(b) - which defines the rules. 35 U.S.C. 111 allows a filing without a formal patent claim, without an oath or declaration, and without any information disclosure statement (IDS). It allows the applicant to use the term patent pending immediately after filing.
Once you have filed it you then have a maximum of 12 months to file a standard non-provisional application for patent. When you do that you can then claim the "benefit" of the earlier filing, meaning you can claim the provisional filing date as your priority date.
As a result of this the non-provisional patent application is evaluated by the examiner as though filed on the earlier date, thus eliminating any prior art that was published during that 12 months; in addition the twenty-year patent term is measured from the later non-provisional application so the applicant is on an equal footing with foreign applicants with respect to patent term.
An important consideration is that the although a claim is not required in a provisional patent application, the written description and any drawing(s) of the provisional patent application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the earlier application filing date.
This means that great care should be taken to ensure that the disclosure filed in the first application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application. There is danger here. Too many applicant's have assumed that they can take full advantage of the less exacting requirements of provisional applications and quickly file what i call a "skimpy" provisional. A real issue here is the possibility that the description of the invention is insufficient to support the eventual claims that may accompany a non-provisional application. The danger is that two filing dates may be assigned: one for the incomplete provisional, and another for the added material that was necessary to complete the disclosure. This may lead to losing foreign filing rights and/or invalidating the US patent, dependent on the exact timeline.
The other danger is that the applicant may have the mistaken belief that they are fully protected by an incomplete first filing. Their marketing program may begin to tell potential customers about the new development, they may begin shopping the idea around for licensing, or they begin strategizing how they can exercise the patent against a competitor. The applicant begins to act like they have patent protection that they can rely on.
There is no requirement that the written description and any drawings filed in the provisional patent application and a later-filed application be identical, however, the later-filed application is only entitled to the benefit of the common subject matter disclosed in the corresponding non-provisional application filed not later than 12 months after the provisional patent application filing date.
A good patent practitioner will ensure that the specification written for the provisional patent application complies with 35 U.S.C 112 so that the specification discloses the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention. That's right out of 35 U.S.C. § 112, 1st paragraph.
So - Should You Use Them?
There are some compelling reasons for using this form of intellectual property - let's talk about some of the advantages first. Note that the advantages are situation specific.
The business world I work in is the great world of small businesses and individual inventors. Many of my clients in that space sometimes come to me with a very clever and inventive concept but are not yet sure it can be made into a reliable and affordable product. They often also are not sure about the market. This situation leads to the first characteristic of the provisional. It is lower in cost to file and once you file the provisional patent application, you have a year before you must file for a regular patent. This year gives you time to better assess both the market and the product. If you conclude during that year that the product and/or the market are just not there you can then decide that the cost and trouble of filing a full non-provisional patent is not worth it. The savings are in the thousands and sometimes tens of thousands of dollars (U.S.).
Before you get too excited about the cost savings - note this cost savings is only if you never get a patent! If you do file a regular patent within 12 months the cost of that comes into play. In my experience the total cost once you do that is at least the same as if you had filed a regular patent from the get-go. And it may be slightly higher.
A second advantage - you stake a claim on the invention at a reasonable cost. Once you file the provisional you are completely entitled to use a "Patent Pending" notice on a product or product announcement. This can (sometimes) be very useful if you need to go public with the invention during that year.
As an aside I often hear people say that a Patent Pending is useless without a patent. I completely disagree. My experience has been that most companies are reluctant to make a large investment in copying an invention once they hear that there is a patent pending. On the other hand many small companies and inventors need that entire year to evaluate their product and market and do not announce that they have a patent pending - preferring to keep it a trade secret.
Related to staking a claim on the invention at a reasonable cost - you also stake a claim on a "priority date".
You establish a “date of invention.” The US Patent Office follows a “first to invent” rule. If there is a dispute between you and another inventor, the person with the earliest “date of invention” gets the patent. Because not all inventors can afford to create working prototypes and build and test their inventions, and not all inventors are diligent about maintaining witnessed notebooks to evidence the date of conception, filing a provisional patent application is often the easiest or even only way to establish the date of invention.
In summary there are some obvious advantages to using this approach for protecting your business - and I use them a lot more than I did before. And if I were an independent inventor I would definitely use the provisional route. My one major caveat is be careful and be sure you are submitting a fully supported application. When potential clients come to me looking for a "really cheap" provisional I simply do not participate. It is a mistake.
In future newsletters we will delve into many other aspects of patents and patent law that might be useful for you to know. Patent law is not rocket science - but it is not always intuitive either.