PROS AND CONS OF PROVISIONAL PATENTS
On September 16, 2011 the America Invents Act (AIA) was signed into law, thus heralding a radical shift in U.S. patent procedure away from the historic—and globally practiced—”first to invent” laws, and in its place adopting a “first to file” system. With the effective change date of March 16, 2013 came the rush to be the first person to file a particular patent application with the United States Patent and Trademark Office (USPTO)—even if the person filing was not in fact the first to invent. Given the pressure to be the first to file, applicants and their attorneys are increasingly making use of the provisional patent application as a means of beating out the competition in a timely fashion. Utilizing the provisional patent application method has both pros and cons; however, the benefits of provisional patent application outweigh the disadvantages.
What Is a Provisional Patent?
Technically speaking, there is no “provisional patent,”but rather a provisional patent application, which in any event needs to be followed up with a full-fledged patent application. Since a regular patent application will subsequently need to be filed, why file the provisional version? As with many other official filings in our legal system—real estate recordings to name a common one—the adage “first in time, first in right”applies. The relative simplicity of the provisional patent application allows for quick and less expensive preparation, thereby expediting the “foot in the door”advantage which the first to file applicant enjoys. In contrast to the regular application, the provisional format has less formal requirements. As noted by the USPTO:
A provisional application for patent (provisional application) is a U.S. national application filed in the USPTO under 35 U.S.C. §111(b). A provisional application is not required to have a formal patent claim or an oath or declaration. Provisional applications also should not include any information disclosure (prior art) statement since provisional applications are not examined. A provisional application provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending”to be applied in connection with the description of the invention.
Since provisional applications are not examined yet provide a “means to establish an early effective filing date in a later filed non-provisional patent application”—the primary benefit is the time prioritizing of one’s claim as a statutory bar to the claims of others.
A provisional patent application can be filed up to 12 months following an inventor’s disclosure of the invention whether disclosure is by publication, public use, or offer for sale. It should be noted, however, that the pre-filing disclosures permitted by the USPTO may in fact disallow patenting in some foreign countries. Furthermore, even in the U.S., if the pre-filing disclosures are made more than one year before the filing date of the provisional patent application, patenting in the U.S. is likewise precluded.
A provisional patent application filing date will be acknowledged only if the application contains a written description of the invention in compliance with the requirements of 35 U.S.C. §112(a). Although drawings are not required to be included, it is advisable that sufficient drawings be submitted so as to make sure that the invention is readily understood. A drawing deemed necessary to understand the invention cannot be added to the application after the filing date as such an addendum would be considered new material—something that is prohibited under the provisional patent application regulations.
An accompanying cover sheet to the provisional patent application must include the following:
- Confirmation that the application is a provisional application for patent
- Names of all inventors
- Inventor residences
- Title of the invention
- Name and registration number of attorney or agent and docket number (if applicable)
- Correspondence address
- Any U.S. government agency that has a property interest in the application
It is important to note that although the provisional patent application serves to speedily obtain the critical first-to-file date for the filer, it is in fact a temporary measure which provides “patent pending” status lasting only 12 months from the date of filing—hence the term “provisional.” The 12-month period based on such a filing cannot be extended, and therefore the applicant is left with two choices before the 12-month period expires:
(a)File a corresponding non-provisional patent application, which will still benefit from the previous filing date and which specifically references the provisional application
(b)Convert the provisional patent application to a non-provisional one. The caveat of converting a provisional application into a non-provisional one is the negative impact on the patent term: the term of a patent issuing from a non-provisional application that is a conversion of a provisional application will be measured from the original filing date of the provisional patent application. However, by following the provisional application with a corresponding non-provisional application that references the provisional application within the 12-month pendency period, a patent term endpoint may be extended by as much as 12 months.
Some Disadvantages of the Provisional Method
While the provisional patent application method clearly provides the benefits of a quick procedure for obtaining the earliest filing date, obtaining patent pending status and an inexpensive upfront cost (generally $65 for individual inventors and $130 for most small companies), it is important to consider what is lacking under this procedure:
- Since there is no formal examination of the provisional patent application, there is no patent which issues from such application; it is rather a placeholder valid for 12 months until the applicant goes forward with the more formal steps stated above.
- Although the initial cost is low, the required follow-up non-provisional filing fee means that the applicant is actually paying two fees to achieve what an initial non-provisional filing might have accomplished.
- The provisional patent application preserves the date and renders temporary protection but does not fully protect the invention unless and until the subsequent non-provisional filing or conversion filing meets all of the formal requirements for patent protection. Accordingly, some applicants may gain a false sense of patent protection when they in fact may wind up with no protection at all if the latter application or conversion does not meet with the examiner’s approval.
Obtaining the critical first-to-file date under AIA is of sufficient importance as to motivate applicants to proceed with their filings via a provisional patent application. Despite the potential for pitfalls after the 12 month provisional protection period, in reality those risks are no greater than if one filed a non-provisional patent application initially. Overall, the benefits of provisional patent application outweigh the disadvantages. Contact our registered patent attorney Michael Greenberg to discuss your filing in depth.