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Be Careful with Provisional Patent Applications

There are reasons why you might want to file a provisional application, but saving money is not one of them.
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As mentioned in past columns, one indicia of the likelihood of success of your venture is demonstrably strong intellectual property protection. You are much more likely to interest an investor if you clearly show the basis for a sustainable competitive advantage. On the other hand if your communications with a sophisticated investor demonstrate your lack of understanding of intellectual property and the mechanisms available to protect it, you may well crash and burn.

I ran into this situation few weeks ago. A fledgling entrepreneur was presenting his business plan. When he claimed (with great emphasis) to have an unassailable competitive advantage because he had "obtained" what he called "provisional patents" personally prepared by him and his technically minded co-venturer, I had to force myself continue to listen.

Technically, there is no such thing as a "provisional patent." The patent law provides for a "provisional application," which isn't subject to some of the formal requirements for a regular patent application. A provisional application, however, is not intended to, itself, provide any enforceable rights.

It is not examined by the Patent and Trademark Office (PTO) and is automatically abandoned 12 months after filing. It does not itself ever mature into a patent. For a patent to issue on the subject matter described in the provisional, a regular application claiming priority on the provisional application must be filed within a year of the provisional. And the provisional application must include adequate "support" for the claims of the regular application. In addition, any corresponding foreign applications must be filed within that one-year period.

After he finished his spiel, I inquired why he had filed a provisional application rather than just file a regular application. He gave the expected response.

"To save money," he claimed. "A provisional is much simpler to prepare, and you don't need a lawyer to file a provisional application."

I groaned inwardly. There are reasons why you might want to file a provisional application, but saving money is not one of them. Contrary to popular myth, in the long run you rarely, if ever, save money by filing a provisional application. While you can delay a portion of the expense of preparing a regular application (the cost of preparing a full set of claims), the only time that you save money by filing a provisional application is if you ultimately decide not to pursue patent protection before you file the corresponding regular application.

You can, by filing a provisional application, establish an early effective filing date for a patent claim and avoid an impending statutory bar to patentability. U.S. law requires, for example, any patent application be filed within one year of any as a public disclosure, offer for sale or publication of the invention -- as long as you follow up with a regular application within a year, and, the provisional application includes the required level of detail for the elements of the claim. A provisional application does not require formal claims, and, since provisional applications are not examined, considerably more latitude can be taken with respect to the format of provisional applications as compared to non provisional regular applications. However, in order to be effective, the provisional application must include the same level of detail with respect to an invention as in a regular non provisional application.

A provisional application is a tool that is useful, for example, when there is a real-time crunch. Since the format of provisional applications is relaxed as compared to non provisional regular applications, you can, in an emergency (e.g., a statutory bar sneaks up on you and your attorney), file an "information dump" as a provisional application. However, there is significant risk that some necessary detail may not be included or described with sufficient clarity. If the provisional application is different from the ultimate regular application, the sufficiency of disclosure of the provisional application and support for the claims of the regular application may become issues. As a general proposition, unless circumstances absolutely prevent it, you should take the same care and effort in preparing a provisional application as with a regular application.

A provisional application can also be used to "timeshift" the term of the patent. The term of a utility patent is 20 years from the filing date of the regular application. However, the 20-year term is not started by the filing of a provisional application. By filing a provisional application you can, in effect, avoid statutory bars and freeze the prior art, but delay the beginning of the 20-year term of patent protection until the regular application is filed, up to a year after the provisional is filed. To be safe, however, the provisional application should be essentially the same as the corresponding regular application, with the possible exception of claims and perhaps new subject matter developed after the provisional application is filed.

It must also be kept in mind that filing a provisional application starts various clocks. As mentioned above, if a corresponding regular U.S. application claiming benefit of the provisional is to be filed, it must be filed within one year. And, any corresponding foreign applications must also be filed within that same year. If the provisional application does not meet the requirements for a regular application, you'll be faced with the costs of both preparing the regular U.S. application and typically significant costs of foreign filing.

A provisional application can be a useful tool, in the right circumstances, but like any tool you must know how to use it. This is particularly true when you are talking about intellectual property protection with sophisticated potential investors. Inappropriate use of provisional patent applications will tend to put them off.




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