The Provisional Patent Application Trap
An Internet search using the term "provisional patent application" will bury you in ads by companies offering inventors a low-cost entry ticket to the U.S. patent system.
I'm concerned, but not surprised.
The U.S. provisional patent application filing system was not implemented to provide inventors with cheap access to the U.S. Patent Office. Rather, the provisional filing system was implemented in the mid-1990’s after the U.S. switched from a patent term of 17-years from grant, to a term of 20-years from filing. Congress wanted to put U.S. filers on an even playing field with foreign applicants.
The provisional filing option can be a valuable tool when used properly by trained patent professionals as part of an overall patenting strategy. Unfortunately, misconceptions about the provisional filing option have proliferated. Many are unaware of the pitfalls associated with using the provisional filing option.
Below I will discuss the provisional filing system, as well as its advantages and pitfalls. Finally, I’ll give some thoughts for inventors unable to afford the services of a registered patent attorney.
#1. THE PROVISIONAL FILING SYSTEM
The U.S. Patent Act provides for a unique kind of patent application called a "provisional" patent application. A provisional patent application allows inventors to secure a filing date by submitting a written disclosure of an invention to the U.S. Patent and Trademark Office. Its counterpart is the regular non-provisional utility patent application.
Applicants who submit a provisional patent application have up to one year to file a counterpart regular non-provisional application if they wish to preserve their filing date and have their case ultimately mature into a granted patent.
Applicants utilizing the provisional filing option in lieu of filing a regular non-provisional application should only do so as part of a patent filing strategy. At the initial filing stage, applicants need to focus on drafting the most complete and accurate specification, with high quality drawings meeting USPTO filing standards.
Quality trumps cost.
(my practice preference is to treat the provisional filing option as the option of LAST RESORT.)
#2. ADVANTAGES AND STRATEGIES
The provisional patent application system has several advantages.
First is the lower filing fee. The USPTO fee for filing a provisional patent application is around 16% the base cost of filing a regular non-provisional patent application. I think this may be the largest contributing factor to the proliferation of websites offering low-cost, fee-based assistance encouraging the filing of provisional patent applications.
Second, a provisional patent application need not meet all the formal requirements of a regular non-provisional patent application, such as the need for formal drawings, signed formal documents and claims. One can literally submit a copy of a technical paper as the provisional application.
In my practice, the provisional filing option has historically provided me with solutions to three common issues.
A. The lower formality threshold for provisionals helps me manage a common occurrence: the need to file last-minute patent application. It's very common for inventor-clients to forget to engage their patent attorney well in advance of patent-killing events such as a submission of an article for publication in a journal, or an upcoming presentation at a conference.
B. From a portfolio management perspective, a provisional patent application allows me to (a) delay the patent examination process, and (b) ensure the case will not publish. Before I explain how, let me explain why.
Often clients are on the fence when it comes to whether or not to file a case at all, or they are unable to reach an internal consensus on filing. Perhaps the technology hasn't been fully proven, or development funding may dry with the next budget cycle. Here the client usually has two needs: (1) avoid a large filing fee for a case they may not ultimately want, and (2) ensure the technology doesn't make its way into the public domain via a patent publication. As counsel I must satisfy these needs, while satisfying my professional obligation to get to the patent office as quickly as practical, with as complete a disclosure as possible.
How does the provisional filing system accomplish these two needs? Keep in mind a provisional patent application should thought of as nothing more than a place keeper. Provisional patent applications themselves will not result in a granted patent. The U.S. Patent Office does not examine provisional patent applications. You could upload most anything and still be awarded a filing date and application number.
Because provisionals do not undergo examination, this means I avoid having to deal with things like filing signed formal documents (other than the assignment), responding to office actions, having to submit an information disclosure statement (IDS) citing prior art, dealing with drawing rejections, and the like.
Further, provisional applications are not published or made available to the public until and unless a counterpart regular non-provisional applications is filed. This means if my client decides not to proceed further with the case, I don't have to file a request to withdraw the application from publication, which may or may not take effect. The provisional application simply "dies on the vine."
C. Finally, there is often a need to file a place keeper application in the middle of the development cycle. In view of recent changes in the Patent Act, inventors need to be the first-to-file. I work with mainly chemical inventions, which means sometimes inventors are still working in the lab. We file a provisional patent application with the data we have, and file the full non-provisional after all the data has been collected (hopefully within the 1-year timeframe).
#3. SOME PITFALLS
1. A common misunderstanding is the notion once the provisional application is filed the application is simply "in the hands of the patent office." Many fail to realize a counterpart non-provisional needs to be filed within the one-year period following the filing of the provisional patent application. Not only is the earlier filing date lost, but often these applicants engage in activities that nullify patent rights if an application is not on file, such as offering the invention for sale.
2. Assuming the Applicant is aware of the need to file a follow-on non-provisional patent application, applicants often run into problems later. For example, while drawings submitted with a provisional patent application need not satisfy the regulatory requirements governing patent drawings, drawings need survive the e-filing process and be readable after they are electronically filed with the USPTO.
3. There are a lot of unwritten rules around preparing patent applications that can't readily be found on the Internet or in any book. For example, provisional applications do not need to meet all the formality requirements of a non-provisional filing in order to be accorded a filing date. However, the provisional filing date can later be nullified if it is determined the provisional application failed to meet certain requirements, such as satisfying the "enablement" and "written description" requirements.
4. Many provisional patent applications are not written in light of a search and careful review of the "prior art" (things that published before the provisional filing date). This means the technical description in the provisional application may not be detailed enough to differentiate the invention over what has been previously disclosed in the prior art.
5. If one files a patent application using the provisional filing option, and waits the full year to file the counterpart non-provisional application, the applicant only delays the examination and ultimate issuance of enforceable patent rights.
6. Using the provisional filing system costs applicants more money than filing a non-provisional application. This is because when the provisional option is used, ultimately the applicant ends up paying both the provisional and non-provisional application patent office filing fees. The applicant must also pay an attorney to file the same application twice.
7. Finally, and most fatal, technology is not static. I’ll illustrate my point with a true story. University disclosed technology A in a provisional patent application. Shortly after filing the provisional, University developed related technology B. University published on both technologies in the scientific literature. Because the provisional only disclosed technology A, all rights to technology B were lost and dedicated to the public.
#4. REALITY
Patent applications are complicated legal documents prepared by highly trained professionals who study and pass a special bar exam, and who are typically mentored for several years by seasoned patent professionals. This is not a legal area where one can take shortcuts. There are some that may suggest filing a provisional patent application is as simple as forming an LLC. Not true.
Achieving patent protection is not cheap for a reason. Good, strong, enforceable patent rights costs real money. Anyone considering buying or licensing patent rights, or is on the receiving side of an accusation of patent infringement, will pick apart the target patent.
As I noted above, my practice preference is this: use of the provisional filing option should be the option of LAST RESORT. If I am charged with preparing a patent application to be filed as a provisional patent application, unless there is a good reason, my practice preference is the provisional should look just like a non-provisional patent application - a full background of the invention, a complete and detailed written description, definitions, examples, and a full set of claims and formal drawings.
I understand patent applications are not cheap. Access to the U.S. legal system is out of reach for the vast majority of Americans. Below is a quote from the American Bar Association's 2016 Report on the Future of Legal Services in the United States.
"Most people living in poverty, and the majority of moderate-income individuals, do not receive the legal help they need."
If an inventor simply does not have the means to engage a patent attorney, help is available. The U.S. Patent Office has a very good Inventors Assistance Center (IAC - 800-786-9199). There are groups around the country that help small and independent inventors. Here in Chicago we have the Chicago Inventor Organization.
Long story short – patent applications are not a do-it-yourself project.
Disclaimer: This post was prepared by Michael Ross for informational purposes only, and does not constitute legal advice or establish an attorney-client relationship. Readers should discuss their own particular situation with their attorney before taking, or refraining from taking, any action.