Professor Demchick's Blackboard

Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.

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PROVISIONAL PATENT APPLICATIONS

Provisional patent applications can be highly advantageous if used correctly and very dangerous if used incorrectly. After understanding each client's needs, I recommend that some clients file provisional patent applications and that other clients skip that step. I am not "pro-provisional" or "anti-provisional." I see the provisional patent application as one more tool that is sometimes part of a good strategy. To discuss your specific patent protection needs, please feel free to contact Dr.Demchick.

THERE IS NO SUCH THING AS A PROVISIONAL PATENT: Although there are provisional patent applications, there is NO such thing as a "provisional patent." Despite this, I have seen advertisements for publications, products and services to help inventors get "provisional patents."

A PROVISIONAL PATENT APPLICATION IS A PLACEHOLDER: A provisional patent application allows an applicant to get a filing date which the applicant can use as the "priority date" when filing a non-provisional patent application (i.e. regular patent application). The United States Patent and Trademark Office (USPTO) does not examine a provisional patent application on its merits (i.e., the USPTO makes no decision about whether the applicant is entitled to a patent). The provisional patent application is merely kept as a "placeholder" for a later non-provisional patent application (which is examined by the USPTO to determine if a patent is to be issued).

THE PLACE IS ONLY HELD ONE YEAR AND THERE IS NO MERCY ON THAT DEADLINE: A provisional patent application has a pendency of 12 months from its filing date. This pendency period cannot be extended, regardless of the reason that the deadline was missed. Therefore, an applicant who files a provisional application must file a corresponding non-provisional patent application during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

A USEFUL PROVISIONAL PATENT APPLICATION IS NOT A ROUGH DRAFT OR BASED ON A VAGUE CONCEPT: Many patent agents and patent attorneys have horror stories about inventors who prepared (very poorly) their own provisional patent application. The inventors assumed that they could just file something and then have a professional make it right later. Often inventors create big and often irreparable problems for themselves by filing junk provisional applications. For the most part, provisional patent applications have the same rigorous requirements as non-provisional patent applications do. That is, the application must, through written description and any drawing(s), disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable a person of ordinary skill in the art to which the invention pertains to make and use the invention. The application must also set forth the best mode contemplated for carrying out the invention. These are the same description requirements as for non-provisional patent applications.

A PROVISIONAL PATENT APPLICATION IS MUCH LESS EXPENSIVE IN THE SHORT TERM: The filing fee (what the government charges) is far less. The cost of having a patent practitioner prepare the provisional patent application is usually considerably less than the cost of having the same practitioner prepare a non-provisional patent application. Unlike a regular patent application, a provisional patent application results in no office actions regarding patentability that require the applicant (or the patent agent) to reply.

PROVISIONAL PATENT APPLICATIONS ADD A LITTLE EXPENSIVE IN THE LONG RUN: The total costs for a patent application are almost always greater if you file a provisional patent application and then a non-provisional patent application than if you simply file a non-provisional application. This is because you pay the extra (albeit small) provisional filing fee. Also, the provisional followed by a corresponding non-provisional application requires more of the patent agent’s (or patent attorney’s) time than going directly with the non-provisional application. In my patent practice, the total cost is usually only slightly more for clients who opt for the provisional application first compared with the total cost if the client goes directly with a non-provisional application. That is because almost all of the time I spend on the provisional application is time I do not need to spend on the non-provisional application. However, even a little extra cost is extra cost.

SO WHY BOTHER WITH A PROVISIONAL PATENT APPLICATION? The answer is that it is not always worthwhile. However, it sometimes is. Here are some things to consider:

Provisional patent applications are less expensive in the short run. If you can afford the provisional patent application now, but cannot afford the non-provisional now, the provisional if worth considering. Warning: There is probably no sense in filing a provisional application unless you think it is highly probable that you will have the funds to file the non-provisional application within the one year limit. Otherwise, you are probably better off saving the money and not filing at all. Please remember that a provisional patent application itself accomplishes little.

Provisional patent applications keep your options open. During the pendency of your provisional patent application your invention is "patent pending." You can explore whether a market exists for your invention. You can try to find investors. You can try to get someone to license your invention. If several months into that exploration the prospects for your invention do not look good, you have the option to abandon your application. Although you will have spent some money, it will be less than filing a non-provisional application which you then abandon.

A provisional application gets you a somewhat longer patent term. Usually, United States Utility Patents ("Utility Patents" are the most common sort of patent) have a term of twenty years from the application date. However, the twenty years does not start until the filing of the non-provisional patent application. Therefore, if you file the non-provisional patent application near the end of the one year pendency for the provisional patent application, your patent expires near the end of the twenty-first year after the filing of the provisional patent application.

REQUIREMENTS THAT DON’T APPLY TO PROVISIONAL APPLICATIONS:

There is no requirement that the application include claims of the type required in non-provisional applications. (However, some caution should be exercised. Failure to specifically point out and distinctly claim the subject matter which the applicant regards as the invention in the U.S. Provisional Patent Application could have a negative impact on patent rights in other countries.)

There is no requirement for filing an oath or statutory declaration of the type required in non-provisional applications.

Although technically not required, an Information Disclosure Statement is usually filed for regular patent applications, but is not allowed for provisional patent applications.

BEWARE OF UNSCRUPULOUS INVENTION PROMOTION FIRMS: They engage in many evils. One of their tricks is to misuse the provisional application process leaving the inventor with no patent.