This darticle is intended to describe some of the pros, cons, risks, and best practices when deciding whether to select a provisional patent application as a starting point for patent protection. While it does not cover all aspects of provisional patent applications, it provides some information to consider with the help of a patent attorney. Each technology and company are different, and additional analysis is required in each case.
What are Provisional Patent Applications?
A provisional patent application (also referred to as a “provisional”) is intended as a relatively fast and low cost process to set a “priority date” for an invention. A full utility patent application (referred to as a “full filing”) must be filed within one year of the provisional filing date. Otherwise, the provisional will expire and will never be examined or turn into an issued patent.
While the full filing sometimes includes additional or different content than the provisional, any claims in the full utility patent application claim priority to the provisional filing date must be adequately “supported” in the text and diagrams of the provisional. Adequate support means that a person of ordinary skill in the art of the technology (e.g., a skilled software engineer for a software-based invention) could learn to make and use the invention by reading the text and diagrams (together referred to as the “specification”).
There are several advantages to choosing a provisional patent application as the starting point for patent protection. For example:
- Provisionals have relaxed filing requirements. For instance, there is no requirement that claims are included, and many other formalities (such as inventor declarations) are not required until the full patent filing.
- Preparing a provisional generally costs less in professional fees. A typical patent application takes 40 to 50 hours for a patent attorney to draft. In contrast, by deferring the claim drafting process and additional detail in the specification, a provisional often takes between 10 to 20 hours to draft.
- Provisionals have a lower government filing fee. For “small entity,” the current filing fee is $150 (as opposed to $800+ for a full application).
- Provisionals still allow the applicant to describe their technology as “patent pending” on a product, similar to a full filing.
- Provisionals are a useful tool to quickly receive an invention priority date, for example if a public disclosure may occur with only a couple weeks of advance warning (However, see below on the quality of the priority date)
- Provisionals may be necessary when the resources for a full patent application are unavailable to a new venture. In such case, a provisional as a cursory filing is often better than no filing.
- A provisional can increase patent value when the total life of the patent matters more than how soon the patent is granted (especially in the pharmaceutical industry). Starting with a provisional and waiting until the end of the one-year filing deadline before filing the full utility patent application effectively extends the life of any granted patent by one year.
- A provisional may be useful when the fundamental inventive concepts of the technology could change drastically in the course of development (as opposed to mere implementation changes).
It should be noted that provisional applications were originally envisioned as a system for inventors to take the first steps of patent protection on their own, or reduce cost while testing commercial viability of new technologies. In some cases, such as mechanical or chemical inventions, it may possible for an inventor to establish a strong priority date with little or no attorney assistance. In many other technology areas, especially software, it is unfortunately difficult for an inventor to establish a strong foundation for the full patent application.
There are significant disadvantages and risks in utilizing the provisional system. For example:
- Provisionals may not look as valuable or sophisticated to some investors or acquirers.
- Due to the limited resources allocated for attorney preparation, not as much detail can be provided and certain complex drafting strategies cannot be employed. This detail and strategy can be important to the prospects of getting an issued patent, especially for software-based inventions.
- The cost of filing the full application must still be incurred. Although counter-intuitive, drafting claims at a later time can increase overall cost due to the process of fitting the claims to the specification. This is in contrast to starting with a full utility patent application in which claims form the foundation that the specification is built on.
- It is common that the specification may be significantly enlarged at the time the full application is filed. This may be an effort to make the application more robust or cover new improvements. However, later claims may not be supported well (or at all) by the provisional application. Most examiners take for granted that the provisional filing provides adequate support for the claims in the full application. This can create a “gap” in the examined prior art creating a risk the patent could be invalidated in litigation or discounted during due diligence.
- A related issue occurs in relying on a provisional as the basis of an international patent application under the Patent Cooperation Treaty system (a “PCT application”). The provisional may lack the content for a solid PCT application which ideally requires special care in preparing. Enlarging the PCT application could be problematic if the applicant commercially exploited the technology or publicly disclosed it between the filing dates of the provisional and the PCT application. This is because each country determines the scope of patent rights within its boarders, and most countries do not recognize the one-year grace period for commercial sales or public disclosures that applies in the United States. Therefore, any disclosures by the applicant between the filing dates of the provisional and the changed or enlarged PCT could count as prior art that prevents a patent from granting in foreign countries.
If a provisional is selected for initial protection, the best practice is for the full application to be filed as soon as possible, preferably within weeks or a few months to reduce examination gaps.
It is also best practice for the technology and the provisional filing documents to remain confidential as long as possible (and not commercially exploited, even under confidentiality obligation). This ensures competitors do not see the technology and become inspired, possibly filing blocking patents or more detailed patent applications. Competitor filings can reduce the value of the provisional and its potential for enlargement into a mature and well-protected patent. Extended confidentiality also leaves open flexibility for PCT filings.
While these are some general considerations in selecting a provisional patent application, there are additional factors and considerations that apply in each case. Speaking with a patent attorney is important to determine which type application is correct for you and your organization.