Provisional patent applications: thoughts and suggestions

provisional patent applications
Provisional patents are a bit like duct tape.

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures are called “provisional patent applications.” These are also called “provisional patents,” “provisional applications,” or even just “provisionals.” If used correctly, they can help you start the process of obtaining a patent.

The USPTO doesn’t examine provisional patents. Instead, the USPTO merely stores them in their databases for a year.  After a year, they expire, unless before expiration, you file a regular (non-provisional) utility patent application that references that provisional application.  If you do this, the USPTO links the provisional application to the full patent application and preserves it.

Later, during the examination of the subsequent regular utility patent, you can reference the provisional patent to try to overcome various rejections. Usually, you do this to prove you were the first inventor to file. You can also use the provisional application to try to satisfy examiner requests for additional detail.

Provisional patent applications have few requirements, but be careful!

Regular patents have detailed requirements for format, figures, and claims. They tend to be expensive to file.  By contrast, provisional patents have almost no format requirements, and they are often less costly to file.  With the correct USPTO forms and fees, you can submit almost anything.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch. They also can be 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 helpful. Provisional applications are an easy way to put a lot of supplemental information on the record. This information can include research papers and user manuals, for example. These can be very useful for addressing subsequent examiner rejections.

The bad news, however, is that many a patent application has failed because the inventor first filed a poor quality provisional application. The real problem is if you submit something unsatisfactory and then operate under a false sense of confidence that you are protected.

Dangers of low-quality submissions:

The dangers of a poor quality provisional application are both delayed and subtle.  At first, everything is fine.  Then, typically about 1-3 years after you file the inadequate provisional, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (standard utility) patent ahead of your regular utility patent.  Under today’s rules, almost the only way to establish that you invented first is to cite your earlier filed provisional. You also have to show precisely which parts of the provisional application prove that you invented first.

If the examiner reviews the cited portions of your provisional and agrees, then the provisional application has been successful. You have overcome this rejection.  But if the examiner reviews it and says, “I don’t see the invention here,” then you are in trouble. Your provisional has likely failed, and you may never be able to prove that you invented first.

Three different provisional strategies:

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 proper utility patent.

Risky, fast, and cheap:

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 approach also lets you file a lot of supplemental information.  Worst case, you can later abandon an improperly thought out provisional.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

An excellent way to go:

Category 2:  file a rough draft of a regular utility patent. Inventors and small companies often operate on a limited budget and need to get something submitted on a short deadline.  Here the goal is to try to file something relatively decent, but quickly and on a tight budget.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent. This rough draft follows the standard utility patent format, which provides some vital structure.

This approach tries to capture a good chunk of the value of a full patent application. It also seeks to keep costs at about 50% of a standard patent. Here, the trick is to focus on a few essential draft claims, informal but adequate figures, and at least the most critical technical aspects of the disclosure.

A tricky strategic option:

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue. You may want to do a quality job submitting what you have. However, you may also think that there is a possibility that you will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent is written. But instead of filing it as a regular utility patent, you submit it as a provisional patent.  

This provisional application can then be “aged” for up to a year.  If there are no changes, you can then refile it as a full utility patent.  Otherwise, you can update your earlier provisional, and then file it as a 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.

Remember the international filing deadlines:

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 international patent filing deadlines, all fall on the same day.

Ex Parte Reexamination

ex parte reexamination
Patent Ex Parte Reexamination

Are you having problems with a patent that you believe is invalid? Know about uncited prior art? Consider filing a Patent Ex Parte Reexamination request.

In the US, there are various legal methods to challenge the validity of issued patents. These legal methods vary significantly in expense and relative risk.

Ways to challenge a patent:

  • You can try to challenge a patent by a full Federal Court trial. Such trials are costly.  Indeed, patent litigation is called the “sport of kings.” Another problem is that you (the challenger) can’t be anonymous. So the possibility of “return fire” is high.
  • Alternatively, you can try to challenge a patent by an inter partes review (IPR) at the USPTO Patent Trial and Appeal Board (PTAB). The IPR process is essentially a streamlined mini-trial. IPR are relatively new (since 2013). Congress established them in an attempt to reduce the high costs of litigation. Indeed, IPR are about an order of magnitude cheaper than Federal Court litigation. But this is still quite pricy for small firms. Also, again, the challenger can not be anonymous.
  • You can also challenge a patent by filing a USPTO Ex Parte Reexamination request. Reexamination is the real low-budget approach. Reexaminations can cost an order of magnitude less than an IPR (and two orders of magnitude less than Federal Court litigation!) Ex Parte Reexaminations are thus in the price range for individual inventors and small startup companies. An additional advantage of this method is that you (the challenger) can be anonymous.  That is, if you file through an attorney, you need not give your identity, thus avoiding return fire.

Ex Parte Reexamination trades off cost for control:

At present, patent challengers only file about 200 Ex Parte Reexamination requests each year. Given the low costs and minimal risks, why isn’t this method used more often?  Probably because fewer arguments are allowed, and the challenger has less control over the process.

To file an Ex Parte Reexamination request, you (the challenger) need to identify some new and convincing printed prior art. Usually, this is one or more patents or other publications that the original patent examiner didn’t consider. These additional citations should be convincing enough to raise a Substantial New Question of Patentability (SNQ). Here, the USPTO only allows you to bring up two issues. These are anticipation (35 USC 102 – one new reference is enough); or obviousness (35 USC 103 – usually based on two or more new citations).

Initiating an Ex Parte Reexamination:

To initiate the challenge, you need to fill out a USPTO form (PTO/SB/57) with the relevant information, and further include a detailed request providing further explanation. The explanation shows how the various limitations in the challenged claims correspond to the new prior art references. Claim charts can be used, but are not required. This explanation is a bit like a USPTO office action.

You (as challenger) submit the form and detailed request to the USPTO along with other required papers. The USPTO will also require a reexamination fee (presently $3,000 for a small entity). You must also serve a copy of this request to the owner of the challenged patent. The USPTO requires you to provide proof of service as well (you can have a third party do this). This lets the USPTO verify that you have notified the patent owner. 

After you file the Ex Parte Reexamination request: 

The USPTO will review the request. If your request complies with the USPTO standards, they will inform the patent owner that the USPTO is reexamining their patent. You (as challenger) will then have no further input. 

Once reexamination starts, the USPTO patent examiner reopens examination by issuing new rejections, which the patent owner must rebut. 

The results depend on how well the patent owner rebuts the new rejections. Sometimes, such as when the patent owner knows that the patent is weak, they may “forfeit.” But if your new citations are not good enough, they may come back with an adequate response. In this case, the reexamined patent will issue again. It can reissue with either with the same claims or more limited claims. Now, what is left will be a bit stronger because of the added review.

Still, if you want to try to knock out a troublesome issued patent, know about some juicy but uncited prior art, and are on a budget, consider the Ex Parte Reexamination option.

Writing patent claims

A patent claim is like a jigsaw puzzle piece
A patent claim is like a jigsaw puzzle piece

Writing patent claims is analogous to describing multidimensional jigsaw puzzle pieces using words.  Your claims have to fit in the spaces between prior art.

Patent claims are the most important part of a patent because the claims are legally enforceable.  Claims are also the trickiest part because they have to follow many rules.  Claims should describe your invention, not read on the prior art, and not be obvious variations on prior art. Claims should also be precise enough that others can clearly determine what it is that you are claiming. Claims are also important for determining inventorship, and patent ownership.

Like a jigsaw puzzle:  As a useful analogy, consider each patent claim to be somewhat like a multidimensional jigsaw puzzle piece. Each claim should be written using words and clauses that, in addition to describing your invention, “bend in” to avoid prior art, and “bend out” when there is no prior art.

From the patent examiner’s standpoint, he or she is looking at your claims in the context of the other prior art (the other pieces). The examiner is determining if each of your particular claim “pieces” is fitting nicely into the holes between prior art, or if they are hitting the other prior art “pieces”.  If there is overlap, the examiner will, at a minimum, want you to make your claims “bend in more” to avoid that prior art.  Part of the process of writing patent applications is to try to anticipate where this might happen and to write the patent in a way that gives you more options to “bend in” and “bend out” during the patent examination process.

There is one big difference between jigsaw puzzles and patent claims, however.  In jigsaw puzzles, although the different pieces can’t overlap, the gap between the different pieces can be made very small.  Think of this gap as the area where, given that one piece is “bending in“, it is “obvious” that the other piece must “bend out“.

Unlike jigsaw puzzles, examiners often require that this “gap” be big enough so that the shape of your jigsaw puzzle piece (claim) is not immediately obvious in view of the shape of the neighboring pieces.  In fact, a big part of the patent examination process is negotiating the extent of this gap, and how best to amend the claims accordingly.

Design patent rocket docket

design patent rocket docket
Design patent rocket docket

Want to get your design patent application examined quickly? The USPTO’s design patent “Rocket Docket” cuts examination time down to only a few months. But you must put more effort (and fees) into your initial filing.

The USPTO’s design patent “Rocket Docket” (their term for a request for expedited examination of a design application) is the best way to get a design patent quickly. It can cut the overall “waiting for examination” time down from about 13 months to about four months. So if you would like to speed up the process, file your design patent using the “Rocket Docket.”

Here, more than just extra fees are needed. The USPTO also wants you to expedite their prior art search process.

Why do they want this? Some countries (including the EU and some other Hague participating countries) merely register designs without checking them for originality. So these countries have a more “rubber stamp” type process. However, the USPTO examination process is not just a rubber stamp. They do their prior art search and review your drawings against different previous designs. Although most new design patent applications pass, the USPTO occasionally rejects some for lack of originality or obviousness.

It is hard to do prior art searches for design patents. Usually, you can do prior art searches by searching for matching keywords. However, unlike other types of intellectual property, designs have hardly any keywords. Design patents are almost 100% images, and often the unique keywords are in the title, and these are usually useless. Perhaps in the future, the USPTO will turn to Machine Vision/AI type searching methods and do direct image-based prior art searching. But they are not there yet.

So given these difficulties, the USPTO will make a deal with you. If, when you submit your design patent application, you also help them with their prior art search, they will go faster. This extra “Rocket Docket” fee is called a 37 CFR 1.17(k) fee. It usually is a few hundred dollars (presently about $450 for small entities).

How do you help the USPTO with their prior art search?

The USPTO requires a bona fide (i.e., a serious and competent) prior art search. They want documentation, on an SB27 form, of the various patent fields examined during this search. The USPTO also wants you to list the specific applications of your design. They also want you to report any relevant citations on an IDS (SB08) form. It is not a good idea to cut corners here, because if this part looks too sketchy, the USPTO may deny your Rocket Docket request.

So consider the Rocket Docket. Although it costs more, it speeds up the process. It is particularly useful if you are facing competitors. It is also helpful if your design is in an area where it is essential to introduce cutting-edge designs rapidly.

Continuation applications

Don’t like having your own inventions used against you?  Before your patent issues, consider filing a continuation application.

Continuation applications
Continuation applications

Just got your US patent application allowed by your examiner?  Congratulations!  Now before it issues (usually about 2-4 months after you pay the issue fee), you need to decide if you ever will want to file any improvements or variations of that invention in the future.

If you do have some improvements or variations in mind, now is the time to start working on filing a “continuation-in-part” (or CIP).  In a CIP, you are basically telling the USPTO that you have added some new concepts to your original patent application.  This is OK – worst case the examiner may determine that the new concepts have a later filing date, but in any event, the examiner won’t hold your original patent application against you.

In contrast to a CIP, patent continuation applications are essentially a repeat of the original application. Any differences to the claims had better be fully disclosed in the original application.

Why file a continuation?  One common reason is that you think that you may be able to get stronger claims the second time around, perhaps by making the claims shorter and hence stronger.  Or perhaps there was something in the original application that you forgot to put into your original claims. Both types of claim changes are fine so long as you can show that the newer claims were fully disclosed in the original application.

A second common reason is a nagging fear that although you might not have thought of any improvements or variations yet, you can’t rule out the possibility that you might do so in the near future.  Here, if you don’t file a continuation, after your patent issues, your own patent will be used against your later patent applications as if someone else had invented it.

However, if you do file a continuation, it essentially keeps your original patent “alive” a while longer (usually at least another year or so).  Then, if you do come up with an improvement, you can then file a CIP to your continuation application.  When you use this strategy, the USPTO will allow you to claim your later improvement without using your original application against you.

Foreign patent traps

foreign patent traps - using your own prior art against you
It’s a trap!

Outside of the US, foreign patent offices will often use your own prior patent filings against you.  Avoid this trap by planning carefully.

Both US and foreign patent laws are based on various legal fictions.  One legal fiction is that an invention is instantly created in a fully formed state.  Another legal fiction is that even if a particular improvement to the invention was not actually obvious to the real inventor, still an examiner or judge may reject this improvement as being obvious to an imaginary “person of ordinary skill in the art”.  Patent law just doesn’t cope with hindsight well.

In practice, we all know that real inventions often come into life slowly, usually after much trial and error.  Complex inventions may take years to fully develop. The inventor is thus faced with a dilemma – file fast so as to be the first person to file, or keep working on the invention, file a better patent application, but possibly lose to someone who filed sooner?

US patent laws recognize this problem and allow an inventor to file as many patent applications as needed, even over a period of years, and gradually accumulate a “stack” of patent applications.  This stack of patent applications captures both the time of earliest invention, as well as a later time-optimized form of the invention. Intuitively this system seems fair.  Wouldn’t it be unfair to use an inventor’s own earlier work against the inventor?

Doesn’t this basic rule of fairness apply everywhere?  Unfortunately, it does not.  The harsh reality is that in international patent filings outside of the US, other countries typically use an inventor’s own earlier patent applications against them.

This assumption of basic fairness often traps inventors and startups.  Here the only way to avoid the trap is to recognize that this problem exists, and take steps to mitigate problems.

As a good rule of thumb for international patents, assume that there is at most a 12-month window after a first (US) patent application has been filed in which to make further improvements. Plan accordingly. If you have thought up improvements to your invention, it is far better to submit these improvements as an updated PCT patent application before the 12 month anniversary of the first patent application.

After 12 months, you can’t claim the priority date of your first US filing. Someone else can jump ahead of you and claim credit.  Even worse, 18 months after filing (when usually your first US patent application will be published) your first US patent application can then be used against your later filed improvement.

It is very irritating to have an international examiner claim that your improved invention is obvious against your own earlier-filed application.  Even more irritating when you know that in reality, the improvement was totally not obvious.  Perhaps the improvement may have taken you a year or more of hard work!  Too bad — to the foreign examiner, your improvement is obvious.

The lesson here is: if you have made improvements, file them as an updated international patent within 12 months of the filing date of your first invention (or in an emergency, at least before your first patent application is published — usually 18 months after first filing).