Provisional patent applications: thoughts and suggestions

Ducttape
Provisional patent applications are a bit like duct tape — useful, but temporary.

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures, called “provisional patent applications” (often abbreviated as “provisional patents”, “provisional applications”, or even just “provisional”), represent an excellent opportunity to quickly and inexpensively start the process of obtaining a patent.

Provisional patents are not usually examined. Instead they are merely stored in the USPTO databases for a year.  They are then discarded, unless within that year, the inventor then files a regular utility patent application that references that provisional application.  If this is done, the USPTO keeps the provisional stored forever.

Provisional patents are often useful because later, during examination of the subsequent regular utility patent, the inventor can reference the provisional patent to overcome examiner rejections (e.g. overcome other patent’s priority dates, supply additional detail, and so on).

Regular patents have detailed requirements with respect to format, figures, and claims, and tend to be expensive to file.  By contrast provisional patents have almost no format requirements, and they are inexpensive to file.  Almost anything that can be put onto paper (e.g. a PDF format) can be filed as a provisional application.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch, or as complex a fully developed 100+ page formal patent application.  The USPTO will cheerfully accept either one of these.

The lack of format requirements can be very helpful.  Many a patent application has been saved by the fact that the inventor had earlier filed something, such as a research paper or user manual, essentially as-is, as a provisional.  Although such items would never be accepted as a regular utility patent application, informal provisional patent submissions can be a quick way to put important information on the record.

This is the good news.  The bad news is that many a patent application has been lost because the inventor first filed an inadequate provisional application, and then operated under a false sense of confidence that he or she was protected by that inadequate provisional application.

The dangers of an inadequate provisional application are both delayed and subtle.  At first everything is fine.  Then, typically about 1-3 years after the inadequate provisional has been filed, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (regular utility) patent ahead of the applicant’s regular utility patent.  Under today’s rules, almost the only way to establish that the applicant invented first is to cite the earlier filed provisional patent, and state precisely which parts of the provisional application prove that the inventor was first.

If the examiner reviews the provisional and agrees, then the provisional has been successful and the inventor will hopefully go on to successfully get the patent.  But if the examiner reviews the provisional and says, “I don’t see the invention here”, then the provisional has likely failed, and the inventor may never be able to prove that he or she invented first.

Three different provisional strategies:

Personally, I think that it is useful to think about three different categories of provisional patents.  These categories are: 1) quickly file your existing write ups; 2) file a rough draft of a regular utility patent; and 3) file a complete utility patent, but do so as a provisional patent rather than as a regular utility patent.

Category 1:  quickly file your existing write ups.  These can be existing papers, PowerPoint presentations, handouts, whatever.  The argument in favor of this approach is that this is the quickest way of getting something on the official patent record.  This may also be a quick way of filing a lot of supplemental information.  Worst case, an improperly thought out provisional can later be abandoned.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

Category 2:  file a rough draft of a regular utility patent.  Many provisional applications are filed by inventors and small companies operating on a limited budget.  Here the goal is to try to quickly file something that is relatively decent, but also try to save money while a new idea is being evaluated.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent, following the standard utility patent format, which provides some important structure.  This approach tries to capture a good chunk of the value of a full patent, while keeping costs at about 50% of a standard patent, by focusing time on a few key draft claims, informal but adequate figures, and at least the most important technical aspects of the disclosure.

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue, but the inventor thinks there is a possibility that they will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent can be written, but is instead filed as a provisional patent rather than a regular utility patent.  This provisional application can then be “aged” for up to a year.  If there are no changes, the original provisional can then simply be refiled as a full utility patent.  Otherwise the changes can be dialed in, and an updated version filed as the full utility patent.  An additional advantage of this Category 3 approach is that it can effectively increase the lifetime of the final patent by up to a year.

A few other nuances – if you are interested in foreign patent filings, realize that the 12 month foreign filing deadline starts ticking from the time you file your provisional application.  Thus the 12 month provisional expiration deadline, and the US and foreign patent filing deadlines, all fall on the same day.

First (inventor) to file

Mark your calendars for March 15, 2013, because on March 16, 2013, the US patent office switches to the new AIA “first-to-file” system.  In fact, mark your calendars for March 14, 2013, because it is quite possible that the USPTO servers may crash on March 15 under the weight of a huge number of last minute electronic patent filings.

The US patent system has traditionally been friendly to individual inventors and smaller startups.  The old system gave inventors some time to work to improve their original concepts before filing.  Inventors were protected because the old system allowed them to prove (using lab notebooks and the like) that they had thought of the invention some time before their patent filing date.  This proof was called “swearing back”.

The rest of the world, by contrast, has been on a stricter “race to the patent office” aka “first-to-file” standard.  Under “first-to-file”, the inventor with the earliest patent office time stamp wins, end of discussion.

Congresses’ 2011 America Invents Act (AIA) changes the US from the old standard to a US version of “first-to-file”.  There are some tricky aspects to this new standard.  It is possible (with evidence, and only for a limited time) to file a USPTO “derivation proceeding” to challenge a non-inventor (i.e. alleged thief) who filed first.  Inventors are also given up to 12 months after publication or sale of their invention to file, without having their own publication or sale used against them, BUT…

If an inventor publishes or otherwise discloses their idea, someone else hears about the idea, makes a few changes and files first, under the new rules this could legally knock out the inventor’s rights to these improvements. Since, in the real world, inventions often come into focus gradually over time as a series of small improvements, you can see the problem.   To add to the fun, the courts haven’t even seen new rule cases like this yet, and it will take years for them to sort things out.

The moral is, under the new rules, if you want decent patent protection for your work, consider filing on initial concept, and filing again on significant improvements.  Resist the temptation to share your still forming ideas with the world.  The old days of protection by “swearing behind” are gone as of March 15, 2013.  What was OK to do last year is not OK to do this year.