The Provisional Patent Application: Money Saver or Potential Trap?

For inventors seeking to protect their inventions, provisional patent applications can be a very useful tool. While the filing procedures are relatively simple and inexpensive, the practice is sometimes misunderstood. The mere filing of a provisional patent application is no assurance that it will provide adequate protection. The value of a provisional application depends on the quality and sufficiency of the description of the invention accompanying the application. For those inventors and companies that utilize provisional patent applications it is essential to understand what they are, what they are not and how to use them properly.

The “provisional patent application” is not really an application for a patent because it cannot, itself, issue as a patent. Rather, it is a temporary date-holding procedure by which an inventor can secure, with the U. S. Patent and Trademark Office (USPTO), a “filing date” for whatever is disclosed in the provisional documents. The provisional application holds that filing date for one year, at which time it expires automatically. During that time, the application is maintained in secrecy by the USPTO. The phrase “patent pending” may be used. In order to obtain the benefit of the provisional filing date, a “non-provisional” application (i.e., one that can be issued as a patent which I will refer to as a “utility application”) must be filed before the one-year expiration of the provisional. A utility application filed within that year is entitled to the filing date of the provisional, but only for subject matter that was adequately disclosed in the provisional.

A provisional application cannot be extended beyond the one-year term nor can it be renewed. It is not subjected to a prior art search and is not examined by the USPTO. In short, after a provisional is filed, it just sits in the USPTO files until it expires. It becomes useful only if and when a utility application that claims the benefit of the provisional filing date is filed before the provisional expires.

An early filing date is important because, at the risk of over-simplification, one cannot obtain a patent for an invention that is not new. Determining whether an invention is new involves a comparison of the invention with the “prior art,” which includes most publicly available information such as, for example, prior publications, commercial or other public uses, prior patents, etc. Whether something is included within the prior art depends on the date to which the patent application is entitled. If the prior art item predates the critical date it may be used in the comparison. If the filing date is earlier, the item is excluded from consideration. The U. S. system currently allows an inventor, in some cases, to rely on an earlier date on which the invention was made. That will change as of March 16, 2013 when the only consideration will be the filing date. From a competitive perspective, obtaining patents in the U. S. will become, more than ever, a race to the patent office. Proper use of provisional applications can help win that race.

Provisional applications may be used in many contexts. They commonly are filed at early stages in the development of an invention, sometimes before the details of the invention have been fully fleshed out. As the invention is developed additional provisional applications may be filed to add further details, resulting in a series of provisionals, each having its own filing date. Another common reason for filing a provisional application is to take advantage of the one-year pendency during which the commercial prospects for the invention may be explored. When disclosing the invention to a potential commercial partner, having filed a provisional application may provide an additional measure of protection in addition to a non-disclosure agreement. Provisionals also may be a useful asset for start-ups seeking to raise funds. Provisional filing also may be used when a technical paper is about to be published and there is no time to prepare a utility application. The paper may serve as the written description and filed as a provisional.

If an inventor has filed a series of provisionals and the one-year term for the first is near expiration, a utility application may be filed claiming the benefit of the filing date of all of the provisionals in the series. If the year has passed a utility application still can be filed claiming the benefit of the unexpired provisionals.

Among the advantages of the provisional filing procedure, particularly for start-ups, is that the government filing fees are substantially less and the filing procedure is very simple as compared to a utility application. All that is required is a completed USPTO two-page form, an accompanying written description of the invention and the filing fee. There is no requirement to include patent claims as would be required for a utility application. Currently, USPTO fees for filing a utility application are a minimum of $1250; for a provisional application $250. Those fees are reduced by 50% for small enterprises (e.g., fewer than 500 employees). And if the inventor prepares the application, including the written description, himself, attorney fees can be at least deferred. But should he?

Perhaps the most common trap in provisional filing relates to the written description and whether to include claims, even though they are not required. Too often, provisional applications are filed with skimpy descriptions and omit claims, perhaps in the mistaken belief that all that is needed is a general description of the general concept of the invention and that the description and claims can be added to or amplified later. Too often such a filing may be the basis for misplaced confidence and a false sense of security that the invention is protected. Such a filing, however, may be of little or no value in supporting a later filed utility application, which must have:

1. “…a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, … to make and use the same…” and
2. “…one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

In order for a utility application to rely on an earlier filing date of a provisional, the written description in the provisional must satisfy the same standard quoted in (1) above. If it does not, then the utility application will not be able to rely on the earlier date of the provisional. Thus, the value of a provisional filing is dependent on the quality and sufficiency of its written description.

I am a strong advocate of including claims in the provisional application. Drafting patent claims helps to focus on what it is the applicant invented and what it is he seeks eventually to patent. It helps answer the most important of all patent questions: “What is the invention?” Reflecting on the claims can lead to modifications and improvements in the written description. They can help to demonstrate that the inventor understood what it was that he invented, sometimes referred to as being “in possession” of the invention, should that later become an issue.

Preparation of a utility patent application typically involves the skills, experience and judgment of a patent attorney familiar with the issues that may arise during prosecution in the USPTO as well as after the patent is issued, as in licensing or infringement situations. The same may be said of provisional applications, although there may be a tendency to try to avoid the expense of an attorney in a provisional filing by preparing the written description, and even claims, oneself. In the latter case it would be advisable to consult with and have the material reviewed by an attorney before filing. It will add to the cost but could make the difference in the value of the patent that ultimately may be obtained.

Provisional patent applications, properly understood and used, can be a valuable tool in the patenting process. They can establish an early foothold in the protection of an invention and provide an opportunity to do so at lower initial cost. They are, however, only as valuable as the quality and sufficiency of the written description. Provisionals will become more important as we convert to a first-to-file system. For most, the strategy is likely to be: “file early and file often,” to which I would add: “file correctly.”

Published on December 28, 2012