If you are new to the patent world, you may have heard of provisional patent applications but are not sure how they are different from regular (non-provisional) patent applications. We provide some clarifications below to help you understand what a provisional application is and whether to file a provisional patent application.
A provisional patent application (or “provisional” for short) is a utility patent application that is not examined by the U.S. Patent and Trademark Office (USPTO) and does not issue as a patent. In fact, a provisional is not required to have any claims or any particular formatting. However, provisionals are common because they provide a faster and easier way to describe an invention and secure a filing date as the priority date, which would determine whether another publication is prior art, for example. Provisionals then give the applicant one year from the filing date of the provisional to file a non-provisional that describes and claims the same invention.
In contrast, a non-provisional patent application (or “non-provisional” for short) has a set of claims that defines an invention and a specification and drawings which provide enough details of the invention that a reader of the patent application can practice the invention. After being filed in the USPTO, a non-provisional is examined by an examiner. If the examiner deems the invention patentable, then the non-provisional issues into a patent, which offers protection of the invention.
Delaying or Avoiding Higher Costs. Compared to non-provisionals, provisionals are generally inexpensive because they do not need to be examined by an examiner and therefore have lower USPTO fees. Provisionals are also generally inexpensive because they do not require any particular formatting and may require only a small amount of practitioner time to review for any “patent profanity,” or things that an applicant does not want to say in a patent application that might limit the scope of the to-be-claimed invention.
Once filed, provisionals then provide applicants one year to determine whether the costs of preparing and filing a non-provisional are worthwhile. If a product release falls flat or there is very little interest in the marketplace for a product/service that incorporates the invention, then it may not be prudent to invest in one or more non-provisionals. An applicant may also decide to pivot by the year’s end for other reasons. Of course, in some scenarios, even a year delay might not provide the applicant enough time to determine whether a non-provisional is worth the cost.
Speed. Because it takes time to draft a non-provisional, waiting for a non-provisional to be prepared may cause the applicant to miss a bar date or to miss being the first to file.
For example, if the invention was made public 11.5 months ago, then the applicant only has 0.5 months to file a patent application describing the invention due to the publication bar in U.S. patent law. Some patent practitioners are unable to produce a non-provisional that quickly or might charge a premium to do so. As another example, if the applicant wants to obtain protection in a foreign jurisdiction which requires that the first patent application be filed before any publication of the invention (such as China or Europe) and the invention is going to be publicly disclosed in a short period of time, then filing a provisional is a great option. As another example, an applicant may be apprised of development by other companies in the same industry regarding a particular product or service. Filing one or more patent applications early may be the key to protecting the applicant’s intellectual property (IP) and obtaining or retaining the market for that product/service.
Flexible Filing Strategy. A provisional can describe as many inventions as an applicant would like to protect. A provisional can be conveniently filed when a single major product incorporates multiple inventions and a public disclosure of that product is soon to be made. As an applicant is not required to file a non-provisional for each of the multiple inventions described in the provisional within a year, an applicant may file a first non-provisional for a particular invention of the multiple inventions within a year of the provisional by reusing the entire provisional covering the multiple inventions and providing a set of claims directed to that particular invention. The applicant can then file one or more continuation (also non-provisional) applications claiming the other inventions during the pendency of the previous non-provisional. Under normal circumstances, all the non-provisionals can then claim priority to the provisional. However, there is a risk in doing so, as explained below.
Confusion in Filing Deadlines. One danger relates to foreign practice. To pursue foreign protection, after filing a non-provisional in the US (or in the applicant’s home country), it is common to then file a Patent Cooperation Treaty (PCT) international patent application within twelve months of that initial filing. Some people (including some new practitioners) erroneously believe that a similar process would apply when a provisional is filed first instead of a non-provisional; that is, file a provisional, then wait twelve months and file a non-provisional, then wait another twelve months and file a PCT application. However, such people will soon learn a terrible lesson when they find out that the PCT application is invalid because it needs to be filed within twelve months of the initial filing, in this case the provisional filing. Fortunately, practically every patent law firm implements a docketing system that reminds practitioners and staff of the twelve-month deadline, after filing a provisional, for filing a non-provisional and a foreign application (of which, PCT is a type).
Lack of Support. The main danger of filing provisionals comes from the fact that an invention that is eventually claimed in a non-provisional must be fully supported by an initially filed provisional if the applicant desires that the invention have the filing date of the provisional instead of the later filing date of the non-provisional as the priority date. If a claim in a non-provisional is not supported by the provisional, then the claim might be invalidated by prior art that is dated before the non-provisional but after the provisional.
This danger becomes acute when the language used in a non-provisional is very different than the language used in a provisional. Oftentimes, the written materials that are included in a provisional are drafted by engineers or scientists and such materials have a different target audience than the target audience of a non-provisional. For example, written materials may be drafted to educate supervisors in the same organization or potential customers. Thus, written materials may use company specific terminology that is unknown to the industry or customer-facing terminology. Both types of terminology might be limiting the scope of the non-provisional. Another common scenario is that that the written materials included in a provisional are mainly marketing materials or otherwise describe the invention at a very high level without adequate details to support the claimed invention or enable others to practice the invention.
Therefore, even though each situation is unique, if there is time to prepare a non-provisional and an applicant knows that a non-provisional will eventually be filed, then a provisional is not generally recommended, at least due to the added (though modest) expense of a provisional and the risk of inadequate support for claims in a subsequent non-provisional.
Oversight in Filing Strategy. Another significant danger (alluded to above) comes into play when multiple inventions are described in a provisional and the applicant does not want to invest in a non-provisional for each invention within a year of filing of the provisional. The approach of filing consecutive continuations noted above has a risk because the multiple inventions might not share inventors.
For example, a provisional describes inventions A and B. At the year mark from the provisional, the applicant files a non-provisional for A, including a set of claims for A. Two years later, right before the non-provisional issues, the applicant files a non-provisional for invention B. For the nonprovisional for invention B to be able to claim priority to the non-provisional for invention A and ultimately to the provisional, there must be at least one inventor in common between inventions A and B.
Imagine there are three or more inventions described in the provisional and the applicant wants to file a chain of non-provisionals, where only the first non-provisional is filed within a year of the provisional. In order for the last non-provisional in the chain to claim priority to the provisional, it must have at least one inventor in common with each of the non-provisionals in the chain.
When multiple inventions have different inventors, it may be impossible to file consecutive continuations respectively directed to the multiple different inventions. Some sophisticated filing of non-provisionals may be necessary in order for all non-provisionals to claim priority to the provisional. One approach that can be taken is to always include, in each non-provisional, at least one claim for each of the inventions that have not been examined in another non-provisional, and file subsequent non-provisionals as divisionals, at the expense of potential excess claim fees.
Reach out to our professionals to discuss your ideas and whether it makes sense to leverage a provisional application to protect them.
See https://www.uspto.gov/web/offices/pac/mpep/s201.html, for example, for definitions of a continuation and a divisional.
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