Malcolm J. Chisholm Jr.

 


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WHO SHOULD USE A PROVISIONAL PATENT APPLICATION?

On June 8, 1995, The U.S. Patent & Trademark Office created a new method of applying for patent protection entitled a "Provisional Application for Patent". Prior to the introduction of Provisional Patent Applications, the traditional method of securing essentially the exclusive rights of use, manufacture and sale of inventions was to first perform a patentability search to measure the likelihood of achieving meaningful patent protection followed by a full "utility patent application". That two-step process typically would take anywhere from 4 - 10 weeks, and include costs frequently ranging from $5,000.00 to in excess of $8,000.00 for complex inventions such as fuel cells, computer components, etc. Upon filing of such a utility application, the inventor or more typically the inventor’s employer could then use the designation "PATENT PENDING", and could start marketing the invention without loss of any international patent protection. Normal examination by the U.S. Patent & Trademark Office of such a utility patent application takes from 18 - 24 months prior to issuance of a U.S. Patent. If international patent protection was desired, it could be pursued within a year of the filing date of the utility patent application. This traditional procedure clearly favors established businesses and has always been a considerable financial obstacle to small businesses and individual inventors.

Provisional Patent Applications are in part an effort to minimize some of those significant hurdles to meaningful patent protection. A Provisional Patent Application does not have to include all of the detailed requirements of non-provisional patent applications, such as a full utility application. Therefore, a Provisional Patent Application offers several major advantages to inventors and their employers.

First, a Provisional Patent Application may be prepared and filed within 1 - 3 weeks at typically between about one-fifth to one-half of the costs of preparation and filing of a non-provisional, utility patent application. Second, upon filing of a Provisional Patent Application, the inventor, or the inventor’s employer is entitled to use the designation "PATENT PENDING". Third, the filed Provisional Patent Application receives a "filing date" that will become the "effective filing date" of a subsequently filed, non-provisional patent application, such as a full utility application. However, in order to achieve any of the exclusive rights of a patent, the applicant of the filed Provisional Patent Application essentially must file a non-provisional patent application within a year of the filing date of the Provisional Patent Application, or the Provisional Patent Application will be abandoned. The subsequently filed, non-provisional patent application will be entitled to the "effective filing date" of the earlier filed Provisional Patent Application. This is a very important advantage; especially where a competitor may have invented a similar invention after the filing date of the Provisional Patent Application but before the date of the subsequently filed utility patent application.

After nearly a decade of Provisional Patent Application practice, several circumstances have arisen wherein a Provisional Patent Application makes a lot of sense.

The first circumstance appropriate for use of a Provisional Patent Application is where a company has developed a new product, but is unsure of how well received the product will be in the marketplace. Rather than invest in the substantial cost of a patentability search and a full utility patent application, filing a Provisional Patent Application will provide the company with 9 - 10 months to measure market receptivity of the product. If sales reach expectations, a full utility patent application may be filed within a year of the filing of the Provisional Patent Application, and the utility application will receive the effective filing date of the earlier filing date of the Provisional. If the product is not successful, the Provisional Patent Application may be abandoned, resulting in significant cost savings.

The second such circumstance is where an inventor or her or his employer desires to secure international patent protection. Under U.S. Patent Law, inventors and their employers are given an effective "grace period" of one year to offer for sale, advertise, sell or otherwise market a new product prior to filing a patent application on the product. However, under the patent laws of virtually the rest of the world, inventors or their employers must file a patent application somewhere prior to any offering for sale or other marketing of the product, or all patent rights are lost in those foreign countries. This is referred to as an "absolute novelty bar". Therefore, by filing a Provisional Patent Application, one can establish an "effective filing date" quickly and at modest cost prior to the commencement of any marketing activities in order to preserve the opportunity of pursuing international patent protection. However, the inventor or the inventor’s employer must file a non-provisional patent application within a year of the filing date of the Provisional Patent Application to actually achieve any patent protection whether in the U.S.A. or in any foreign countries.

Another common situation meriting filing of a Provisional Patent Application is where a product has been sold for less than a year, but for more than 10 or 11 months and the owner of the product decides patent protection would be a valuable competitive asset. A Provisional Patent Application may be quickly prepared and filed within 2 - 3 weeks in order to achieve a filing date within a year of the commencement of marketing of the product, and then a full non-provisional patent application may be thereafter filed with the more tedious requirements of formal drawings, detailed claims, etc.

Many circumstances, however, simply cannot obtain any advantage from filing a Provisional Patent Application. Therefore, proper patent counsel should be considered prior to deciding whether-or-not a Provisional Patent Application is an appropriate course in specific situations.

Provisional Patent Applications may also involve substantial risks. Most notably, the Provisional Patent Application must include all of the detail necessary to fully explain and practice the invention. However, the subsequent utility application cannot include any significant, new matter that is not in the Provisional. This means, significantly, that if during the 9 - 11 months between the filing of the Provisional Patent Application and the subsequent non-provisional patent application an improvement to the invention is made, the improvement cannot be part of the subsequent non-provisional patent application. That may have devastating consequences in specific situations. Consequently, an inventor must carefully consider a variety of factors prior to deciding to utilize a Provisional Patent Application.

Additional information on Provisional Patent Applications is available from the web site of the U.S. Patent & Trademark Office at www.uspto.gov.

Copyright 2004, M. Chisholm