First introduced in 1995, the always-popular provisional patent application process has become even more widely used since the America Invents Act switched the U.S. patent system to a first-to-file standard in March 2013.
In some circles, provisional applications have a reputation as a tool of insufficiently prepared or excessively improvisational patent prosecutions, which may be why some IP law firms actively avoid using them. Provisional applications can be useful tools of strategy, however, if one is aware of their benefits and drawbacks. Here are five of the big ones:
Provisional applications are not reviewed by a USPTO examiner.
In fact, provisional applications are not reviewed by the USPTO at all. They are merely acknowledged, and that acknowledgment starts the clock on an applicant’s 12-month window to file a completed regular application. If the applicant fails to file that application within 12 months of the provisional application’s receipt date at the USPTO, the provisional application expires. Unlike a regular patent application, a provisional application cannot be abandoned and later revived. If the provisional application expires, the applicant is back to square one.
A provisional application can “hold a spot in line” for a later, regular application.
In doing so, the provisional application imbues the later application with its priority date under the first-to-file system. That means the full application will be treated as though it were received on the date the provisional application was submitted. A provisional application is not, however, used in the determination of a patent’s duration. Because of this, a provisional application can effectively be used to give a patent a “bonus year” of patent protection at the start of the standard 20-year term.
If you file a provisional application, file a good one.
Just because a provisional application holds an invention’s place in the priority queue does not mean it should be treated as a mere placeholder. As patent attorney Gene Quinn has pointed out on IPWatchdog, filing a poorly drafted provisional application before an invention is fully ready can give competitive rivals ammunition to challenge a patent in the future. Even though the provisional application will not be scrutinized by an examiner, it could later become dated evidence that an effective invention did not exist at the time it was filed. How can an applicant prove that an invention existed at the time of the provisional application? That leads to the next point:
A provisional application still requires full disclosure of the invention.
A provisional application does not grant an inventor a 12-month window to devise or complete the articulation of an idea for an invention. The invention must be describable enough to comply with USC 35 Section 112 on Specification. To provide effective protection for the eventual patent, the disclosure of the invention on the provisional application should be all but identical to the description that appears on the later, regular application. The invention must exist. The main benefit of the provisional application, from a prosecutorial preparation perspective, is that even though the invention must be described, its patentability does not yet need to be argued. That is because…
Provisional patent applications do not require claims.
Though an invention must be described in a provisional application, the applicant need not specify any claims for the invention. Those can be withheld until the submission of the full application, up to 12 months later. There is some controversy over the wisdom of not submitting any claims, and some patent attorneys choose to submit very broad claims rather than none at all. These reduced requirements, in addition to the lower fees associated with a provisional application, have made it a popular option not only for large IP-driven companies but also for smaller firms and individual inventors.