Use of Provisional Patent Applications

Provisional patent applications became available on June 8, 1995 in response to the General Agreement on Tariff and Trade (the GATT treaty) whereby applicants in the United States are able to establish an early filing date by filing a simplified provisional application.

Conventional wisdom in the patent community has been that the provisional applications have little or no value due in part to the relatively low number of provisional applications that have been filed since the new regulations went into effect on June 8, 1995. Also, proliferation of advertising by various "patent mills" and do-it-yourself guides has placed provisional applications in a bad light. However, depending upon a client's particular situation, provisional applications may have a place in a patent portfolio strategy.

What Is a Provisional Patent Application?
A provisional application is a less formal patent application that does not require a declaration or claims, has a lower filing fee, and is not examined, but nonetheless establishes a filing date for international priority of invention effective in all WTO and Paris Convention countries.¹

A provisional application only requires:

(a) a cover sheet generally including:

-- a clear statement that the application is a provisional,
-- identification of the inventors (complete names and residence),
-- title of the invention,
-- correspondence address;

(b) an adequate written description of what the inventor considers to be the invention, including the best mode contemplated for carrying out the invention;

(c) drawings if necessary to fully describe the invention;

(d) the statutory fee (as of January 2016) that is currently $260 for large entity, $130 for a small entity, or $65 for a micro entity, as compared to $1600/$730/$400 for a non-provisional utility application.

Why File a Provisional Patent Application?
To achieve the benefit of its "priority" filing date, the provisional application must still comply with the requirements of 35 U.S.C. § 112, namely: adequate disclosure of the invention, enablement, and best mode. Yet, if an application is sufficiently prepared to comply with § 112, then why not file a non-provisional application?

There are circumstances in which a provisional application makes sense. Following are some, but not all, of the circumstances that may be useful to consider when deciding whether or not to file a provisional application.

1. Advantage: Savings in costs for filing and time for preparation. Since a provisional application is not examined, the applicant is not required to submit claims. The lack of a claims requirement may reduce the time and cost for writing the application. Moreover, various Patent Office rules on the form of the application do not apply. Essentially, any written disclosure can qualify as a provisional application and obtain a provisional filing date.

Disadvantage: The provisional application still must comply with the requirements of § 112: a complete and adequate disclosure of the invention; disclosure of the best mode; drawings as required. If the provisional application cannot support a later drafted claim to the "real" invention, then the provisional application has little value.

2. Advantage:The provisional application is easier to prepare, has fewer formal requirements, and does not require claims.

Disadvantage: Since claims are not required, a complete concept of the invention may be lacking, resulting in inadequate disclosure. Alternative embodiments may not be considered or disclosed in the rush to file. Definition of certain useful terms may be lacking that could have been identified when preparing the claims.

3. Advantage: Even if a provisional application is less thorough and complete, it is better than nothing. One reason for filing a provisional application is the cost savings. But for the lower cost of the provisional application, no application may have been filed at all.

Disadvantage: The pending provisional application may create a false sense of security and lead to delay in filing a truly thorough and complete application. The complete application should be promptly filed.

4. Advantage: The provisional application establishes an early filing date, but it does not count against the 20 year patent term. Thus a provisional application may provide up to one additional year of patent protection.

Disadvantage: Since the filing of the provisional application may allow delay of filing of the regular application, issue of the patent may itself be delayed. Such delay, depending upon the product's competitive position, may or may not be desirable.

5. Advantage: The provisional application may establish an earlier U.S. international filing date -- particularly important because most foreign countries have an absolute novelty requirement and since March 16, 2013 the U.S. is a first-to-file jurisdiction.

Disadvantage: Any international application must still be filed within one year of the provisional application filing date, requiring that the relatively high costs of filing international applications be incurred at an earlier date.

6. Advantage: The provisional application filing date will be the 35 U.S.C. § 102(d)(2) filing date (creating earlier prior art for the competition) if a corresponding national or non-provisional application is filed within one year and either issues as a patent or publishes.

Disadvantage: Unless the provisional application is sufficiently reviewed before filing, it may not include sufficient detailed description of all embodiments and thus may not have the needed disclosure to block the competition's patent.

7. Advantage: The early filing date may be helpful if international applications are filed, because in almost all countries priority is awarded on the basis of first-to-file. The provisional application also provides an early filing date for overcoming 35 U.S.C. § 102(a)(1) prior art such as publications, because under 102(a)(1), the U.S. application must be filed within one year of:

• the invention being in public use or on sale in the United States; and
• a description of the invention being published in the United States or any foreign country.

Thus the provisional application filing may assist the applicant in obtaining an earlier U.S./international filing date at a reasonable cost.

Disadvantage: Unless the provisional application is sufficiently reviewed before filing, it may not comply with the requirements of § 112 (written description and best mode). Moreover, the provisional filing may complicate the prosecution particularly if the document is not in English.

Conclusion:
On the whole, there are circumstances where the filing of a provisional application may prove advantageous and should therefore be considered in view of a company's overall patent strategy.

¹Provisional applications can only be filed for utility applications; a U.S. design patent cannot claim priority to a provisional application.

© 2004; 2009; 2016 J Rafter