Let's Talk About It
The subject of the proper use of a provisional patent application is an important one and we will spend a little time on it. As a disclaimer - my views on this have changed several times during my practice. At first I was very skeptical about ever using this vehicle. Although I still have reservations about improper use and 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.
In Part II on Provisional Applications I will delve more into thoughts on how they might be used in a strategic business way with further thoughts about advantages and concerns.
Provisional Patent Application Part I
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Mike Ervin - Cost Effective Small Business Patent Protection.
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