The Provisional Application Trap
Recently I received a call from an inventor who asked what we charge for a provisional patent application. When I told him our price, he asked who in town I would recommend who would do it for less. I responded that I could not recommend doing it for less. He was unhappy with my answer and hung up. Unfortunately, many people have adapted to the provisional patent application as a cheap way of getting protection for their invention without understanding the pitfalls.
A provisional patent application may be filed with little more than a short description of the invention and the appropriate cover sheet. The Patent and Trademark Office filing fee is only $100. Thus, it sounds like a good deal. Filing a bare bones provisional, however, may be much more costly than it sounds.
A provisional allows the inventor to claim priority in a regular utility application (non-provisional) back to the filing date of the provisional. The priority claim, however, only relates back for the subject matter that was disclosed and enabled in the provisional application. Anything that was not in the provisional does not get the earlier filing date. This can have significant ramifications down the road.
For example, an inventor makes a product and then begins selling it. It appears that the product will be a success. He files a brief provisional and contently proceeds marketing the invention. Because the provisional is bare bones, it does not include details of his invention that may become important to patentability. Those details are added in the non-provisional patent filed near the end of the 1 year period that the provisional survives. The inventor ultimately gets a patent. This sounds good until the patent is litigated. It comes out that the inventor had been selling the product for more than one year before the non-provisional application was filed. Anything that does not find enabling support in the provisional is deemed to be in the public domain because it was not disclosed in a patent application filed within 1 year of the date of first sale. The result could be invalidity of the entire patent if the provisional is deemed to be nonenabling.
Likewise, even sales of product after the provisional filing date can create a loss of rights. Most countries outside of the U.S. require absolute novelty, i.e. no public disclosure prior to the effective filing date. While a priority claim can be made back to the filing date of the provisional, any aspects of the invention not clearly taught in the provisional but sold prior to the filing of a foreign patent application will be deemed to be public disclosure of the invention prior to the effective filing date. Thus, the foreign patent will only cover material clearly disclosed in the provisional application.
Over the last ten years I have seen numerous provisional filings - some even by attorneys - that are only two to four pages long and fail to completely disclose the invention. These are time bombs if there have been sales activity, public disclosure, or an offer to sell prior to the filing of a non-provisional application or an international application.
Provisional applications can be a very useful tool. They often cost one-third to a half of a full non-provisional application if done properly. They also give the inventor time to make additional improvements to the invention prior to filing a non-provisional application. If used improperly, however, they merely provide a false sense of security that the invention is truly protected.
A provisional patent application may be filed with little more than a short description of the invention and the appropriate cover sheet. The Patent and Trademark Office filing fee is only $100. Thus, it sounds like a good deal. Filing a bare bones provisional, however, may be much more costly than it sounds.
A provisional allows the inventor to claim priority in a regular utility application (non-provisional) back to the filing date of the provisional. The priority claim, however, only relates back for the subject matter that was disclosed and enabled in the provisional application. Anything that was not in the provisional does not get the earlier filing date. This can have significant ramifications down the road.
For example, an inventor makes a product and then begins selling it. It appears that the product will be a success. He files a brief provisional and contently proceeds marketing the invention. Because the provisional is bare bones, it does not include details of his invention that may become important to patentability. Those details are added in the non-provisional patent filed near the end of the 1 year period that the provisional survives. The inventor ultimately gets a patent. This sounds good until the patent is litigated. It comes out that the inventor had been selling the product for more than one year before the non-provisional application was filed. Anything that does not find enabling support in the provisional is deemed to be in the public domain because it was not disclosed in a patent application filed within 1 year of the date of first sale. The result could be invalidity of the entire patent if the provisional is deemed to be nonenabling.
Likewise, even sales of product after the provisional filing date can create a loss of rights. Most countries outside of the U.S. require absolute novelty, i.e. no public disclosure prior to the effective filing date. While a priority claim can be made back to the filing date of the provisional, any aspects of the invention not clearly taught in the provisional but sold prior to the filing of a foreign patent application will be deemed to be public disclosure of the invention prior to the effective filing date. Thus, the foreign patent will only cover material clearly disclosed in the provisional application.
Over the last ten years I have seen numerous provisional filings - some even by attorneys - that are only two to four pages long and fail to completely disclose the invention. These are time bombs if there have been sales activity, public disclosure, or an offer to sell prior to the filing of a non-provisional application or an international application.
Provisional applications can be a very useful tool. They often cost one-third to a half of a full non-provisional application if done properly. They also give the inventor time to make additional improvements to the invention prior to filing a non-provisional application. If used improperly, however, they merely provide a false sense of security that the invention is truly protected.
When we filed our original patent for Attensity we paid a good amount of money that we really didn't have (being a startup in seed-round stage). But we argued that if it was worth doing, it was worth doing right the first time.
Several years later we had discovered some new techniques that would help strengthen our patents and as we met with our patent attorney and told him our ideas he researched our previous work and told us that because of the way he worded the initial filing, the new concepts would actually be covered back to our original filing date. Because we found someone who really knew what he was doing and was willing to pay his reasonable price, we had a very strong patent and our new ideas began life with three years of protection. We did end up filing a few more patents on a couple of other ideas but I am a firm believer that if you really want a patent that holds up, it is worth finding someone who really knows their stuff and paying them well to do it.
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