Provisional Patent Application

Executive summary:

Provisional patent applications have been used by many inventors to begin the patent process without the cost of hiring a patent attorney. Unfortunately, while provisional applications are easier to file than regular patent applications, inventors often forget that there are requirements that must be met in order for a provisional application to be effective.

The provisional patent application discussion in BitLaw is divided into the following sections:

introduction to provisional applications;
requirements for provisional applications;
the concerns about filing provisional applications;
the best way to use provisional applications; and
other views on provisional applications.

Introduction:

Starting in June of 1995, inventors in the United States have been able to file provisional patent applications. Once a provisional application is filed, the inventor has one year to file a regular patent application claiming benefit of the provisional. If a regular patent application is not filed in this year, the provisional application will simply expire. The provisional application is itself never examined by the U.S. patent office, and no patent will ever issue directly from a provisional application.

The only purpose of the provisional application is to allow a regular application to "claim the benefit" of the provisional application. This means that the regular application will be treated in some circumstances as if it were filed on the filing date of the provisional application. Early filing dates may prove useful in helping to prove who was the first inventor of an invention. In addition, early filing dates can help avoid losing patent rights through loss of novelty, as explained in the BitLaw section on patent requirements.

In addition to the early filing date, provisional applications are useful to extend the duration of a patent. The duration of a patent is twenty years from the filing date of the regular application. Since the filing date of the provisional application is not used to determine the expiration date, it is possible to extend the duration to twenty-one years from the first filing by filing a regular application one year after the provisional application.

Finally, provisional patent applications are less expensive to file, since the the government fees are less, and there is no need to file patent claims or to disclose prior art to the patent office.

Requirements:

The provisional application must include a description of the invention. While this description does not need to conclude with claims, the description must still meet the best mode and enablement requirements, which are briefly described in the BitLaw section on regular patent applications. If the provisional application does not meet these requirements, it cannot be relied upon by a later filed regular applications.

In addition to the description, the provisional application must include

all drawings necessary to understand the invention;
the names of all inventors;
the appropriate filing fee (approximately $75 for individual inventors); and
a cover sheet that identifies the invention.

The cover sheet can be obtained from the U.S. Patent and Trademark Office, or can be downloaded through this link. The cover sheet is a PDF document, so if you have trouble reading it you may wish to review the Patent Office instructions.

Concerns:

One of the problems with provisional applications is that it may not be clear whether the description of the invention meets the best mode and enablement requirements until the regular application is drafted with a complete claim set. This is because these two requirements are always analyzed in connection with the claimed application. If there are no claims, it can be difficult to determine if the best mode of the invention is adequately disclosed.

Unfortunately, too many provisional applications are hastily drawn and do not meet these requirements. When this hapens, the first application that has any use is the regular application, and the money and time spent on the provisional application has been wasted. Even worse, sometimes an inadequate application is relied on to avoid the statutory bars relating to novelty. In these circumstances, the regular application is not timely filed because the inventor felt that the time deadline was met by the provisional application. When it turns out the provisional was inadequate, all patent rights can be lost.

An example of this problem was encountered by the inventor in New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co. In this case, the plaintiff invented a new drill bit where the bit body is "angled with respect to the sonde housing." While this angle was described in the non-provisional patent application, the angle was not disclosed in the originally filed provisional application. Unfortunately, the plaintiff had offered the drill bit for sale more than one-year before the non-provisional filing date, and therefore the patent would be invalid under the statutory bar section of 35 U.S.C. 102(b) unless the patent was entitled to the filing date of the provisional application. Since the claim limitation of the angled drill bit body was not adequately disclosed in the provisional application, the inventor could not claim the benefit of the provisional application and the patent was declared invalid.

It is because of these concerns that patent attorneys are reluctant to get involved with hastily drawn out provisional patent applications that have no claims that are thought to distinguish over the prior art. Attorneys rarely are willing to do a quick review a client's self-made provisional application, because it can be difficult to know whether the description is adequate without a detailed study of the invention and the prior art. If the attorney undertakes such a review and drafts a set of claims, then the provisional application is now ready to be filed as a regular application. As a result, there is little cost savings to the provisional application (beyond the government fee), and a non-provisional application is generally filed.

Use of provisional applications:

Of course, there are some circumstances when it is appropriate to file a provisional application. For instance, sometimes an application has to be filed before a full patent application can be written. When patent rights can be lost if an application is not filed on time, it is better to file a hastily drafted application on time then a well prepared application after a critical bar date. In these circumstances, the initial draft should be filed as a provisional, since the fees are cheaper and the inventor does not want the patent office to examine this draft anyway. The provisional application should then be replaced with a more carefully drafted regular application claiming benefit of the provisional application.

Another legitimate use of provisional applications is to extend the life of a patent. In this case, a complete patent application is drafted in final form, and then submitted as a provisional application. At the end of the one year deadline, the regular application is submitted. If the regular application matures into an issued patent, it will expire twenty years after the regular application filing date (or twenty-one years after the provisional filing date).

Finally, it is sometimes impossible for individual inventors to afford the cost of filing a regular application. The attorney fees for drafting a patent application can run from $3,000 to $20,000 or more, in addition to the $350 to $1,000 fee the goverment will charge. Since the inventor is financially incapable of filing a well-drafting regular application, a self-made provisional application may be the only choice. The inventor would then have one year (before the regular application must be filed) to interest others to invest in or purchase the invention. Care must be taken in these circumstances not to rely too heavily on the provisional application. Most patent attorneys would advise clients who have self-filed a provisional patent application to file a complete, attorney-drafted regular application as soon as it is possible.

Other viewpoints:

Many people are understandably skeptical of what patent attorneys say about provisional applications. Self help groups encourage individuals to file provisional applications for themselves and avoid the large attorney fees, and believe that patent attorneys overstate the dangers. In the interest of fairness, here are some other viewpoints.

Attorneys

Others

U.S. Patent & Trademark Office; and
NOLO Press (publishers of "Patent It Yourself").