Considerations for Protecting your Invention with Provisional Patent Applications

Rothwell, Figg, Ernst & Manbeck, P.C.
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Since the U.S. patent law switched to the first-inventor-to-file system in 2013, provisional applications have become more popular as the initial step for emerging companies to protect their inventions.

Provisional applications can be a high value approach if used properly.  However, if not done correctly, they provide little protection or can even undermine the inventor’s patent down the road.  This post reviews the benefits of provisional applications and potential pitfalls to avoid.

What is a provisional application

A provisional application is a type of U.S. patent application that is not formally examined by the Patent Office (as in the case of a nonprovisional application) but nonetheless helps establish priority of an invention.  To be accepted by the Patent Office and receive a filing date, a provisional application does not need to have any specific content and formatting, or certain formality documents such as an inventor’s oath or declaration. That being said, it is often wise to generate and file a robust provisional application to establish priority for key aspects of the invention, and that includes drafting patent claims to satisfy rules of some non-U.S. jurisdictions.

Provisional applications are typically used to establish a priority date for the subject matter in the disclosure.  A provisional application expires after 12 months from its filing date and will not be examined by the Patent Office.  To ultimately receive a granted patent, an applicant must convert the provisional application into a complete, nonprovisional application by the end of the 12-month window.  The nonprovisional application can inherit the filing date of the provisional application.

Benefits of Provisional Applications

Below are some benefits of using provisional applications as the initial step to protect an invention.

Lower costs

Provisional applications can be a cost-effective way to initiate the patent process.  Government fees for filing a provisional application are much less than a nonprovisional application.  Also, because a provisional application will not be examined, there will be no cost associated with the examination process, such as examination fees and attorney fees for handling the Patent Office’s rejections.

“Patent Pending” status

After filing a provisional application, a company can mark the relevant product as “patent pending.”   While such marking does not provide any legal protection, it serves as a notice to the potential investors and partners that the product includes proprietary technology, which are important in many industries.  The marking may also discourage potential competitors from copying the product.

Establishing an early filing date

Filing a provisional application allows the applicant to establish a filing date (i.e., priority date) at the early stage of the patent process.  The filing date of the provisional application can be the “effective” filing date for a later-filed nonprovisional application converted from the provisional application.  Establishing an early filing date is important for the likelihood of success in getting a patent, as an early filing date eliminates would-be prior art that arises after the provisional application is filed.  In many foreign countries, where there is no grace period for public disclosures or sales made by the inventor before a patent application is filed, establishing an early filing date is especially important.

Not starting the patent-term clock

In general, the term of a U.S. patent is 20 years from the filing of an application that is not a provisional application.  Therefore, although a provisional application can secure an effective filing date for a later-filed nonprovisional application, the patent term clock will not start until the nonprovisional application is filed.

Thus, starting the patent process with a provisional application can help maximize the patent term of an invention.  This is especially important for companies in the pharmaceutical industry.  The value of a drug patent is typically maximized at the end of the patent term.  In many cases, a pharmaceutical company would file a complete application as a provisional application and convert it to a nonprovisional application by the end of the 12-month window.

More time to develop and build upon the invention

An initial provisional application can be filed to cover the invention at the proof-of-concept stage with preliminary data.  If the inventor improves the invention within the 12-month window from the filing of the initial application, the application can be effectively updated with the improvements and refiled multiple times.  The series of provisional applications can be combined and converted to one nonprovisional application by the end of the 12-month window from the filing of the initial provisional application.

Although the improvements may not get the filing date of the initial provisional application, this approach allows the applicant to capture incremental improvements during product development and secure the earliest possible filing date.

More time to assess the value of the invention

It often takes time for emerging companies to fully understand the value of an innovation.  When it is early in development, the uncertainty may not justify the cost associated with a nonprovisional patent application.  But it can be a savvy business move to have a modest investment in a provisional application on an idea that may turn into something valuable.  After filing a provisional application, the company then has one year’s time to evaluate the idea before investing more time and resources into the patent process.

Potential pitfalls

Despite the various benefits of provisional applications, there are some potential pitfalls to keep in mind when developing a patent strategy.

Inadequate description of the invention

Provisional applications are not examined, but they should not be treated as mere placeholders.  For a nonprovisional application to inherit a provisional application’s filing date, the claims of the nonprovisional application must be fully supported by the disclosure in the provisional application.  A poorly drafted provisional application that only mentions the concept but does not have adequate description of the invention is unlikely to be useful to establish an early filing date for a later-filed nonprovisional application.  Sometimes, an inadequate provisional application may even be harmful during the examination of a related nonprovisional application.

Thus, a good provisional application should include enough details that describe the invention in a thorough and precise way.  To the extent possible, the disclosure in a provisional application should match what will eventually appear in the nonprovisional application.

There are circumstances where a provisional application must be prepared within a very short period of time, e.g., to beat an impending public disclosure date.  The provisional application may contain less-than-optimal description of some aspects of the invention.  In such cases, the applicant can promptly file a follow-on provisional application to add any necessary details omitted from the initial filing.  Both applications can be combined and converted into a nonprovisional application to ensure good support.

Will not issue into a patent on its own

A provisional application is not examined and thus will not issue into a patent on its own.  Further actions, e.g., converting to a nonprovisional application and negotiating with the examiner during examination, are needed to receive a patent that results in patent rights.

If a provisional is never converted to a nonprovisional application, it will expire one year after the filing date.  Therefore, applicants should plan well and be diligent in converting the provisional application into a nonprovisional application by the end of the one-year window to avoid forfeiting any potential patent rights.

Examination delay

There are situations where a company needs to quickly receive a patent to raise investment or establish a competitive advantage in a market.  In these cases, filing a provisional application may not be desirable because it will not be examined and thus will delay the examination of the patent application.

To obtain patent rights in an invention as quickly as possible, an applicant should consider bypassing the provisional application and directly filing a nonprovisional application.  The applicant may also consider ways of expediting the examination process, such as the programs discussed in our previous post here.

Conclusion

In conclusion, provisional applications provide a cost-effective and flexible approach for emerging companies to initiate the patent process.  However, companies should carefully balance the benefits and drawbacks to avoid potential pitfalls when developing their patent strategies.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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