The Pros and Cons of Provisional Applications

A provisional application offers an inventor a simple, low cost option of securing a filing date for protecting his invention. It is cheaper than a regular patent application, the current USPTO filing being only $110. It does not need a signed declaration or oath and does not require an information disclosure statement (IDS) which is a list of the relevant prior art known to the inventor. And since the writing of a provisional is simpler, the fees to the patent practitioner are also lower. In addition as soon as the provisional is filed, the inventor can label his invention with “patent pending” as a warning to would-be infringers.

Provisional Applications are NOT Patents. They are NOT examined by the USPTO. They are simply put in storage for one year after which they are discarded. To be of real utility and provide the benefit of their early filing date, they must be followed within a year of filing by a non-provisional application that refers to the provisional.

Provisionals Provide Greater IP Flexibility. A benefit from filing a provisional is that any amendment to the invention can be rolled into the non-provisional when it is filed. More than one provisional can be rolled into a non-provisional provided that they are all filed within a year. These amendments are new matter, receive their own filing date, and therefore do not benefit from the protection of the first filing date.

Poorly Written Provisionals Give no Protection. A provisional application is only useful if or when someone else files the same invention after the provisional filing date. It becomes then a documented proof that the inventor was the first to file. In this event, a process called interference may be initiated at the patent office, in which both applications are evaluated. If there is overlap between the patent applications a well written provisional will prevail. A poorly written provisional by someone not familiar with patent law is an illusory shield that gives you no protection.

It is therefore critical to remember that a poorly written provisional is an absolute waste of time and money. On the other hand, a provisional written with care and attention to patent law can easily be refiled as a non-provisional. Expenses incurred for the provisional can be recouped when the non-provisional is filed.

Be careful of patent promotion companies who file your patent at a greatly reduced price. They will just take a copy of your submission to them and send it to the patent office without any change to it. You can do this yourself without their help.

The specification and drawings need to be complete, broad in terms of what is described and specific to make sure the application is meeting all patentability requirements. A well written provisional will include all the requirements of a non-provisional including a description and drawings detailed enough to enable someone versed in the art to build the invention, and at least one example of the best implementation mode. Filing at least one claim is recommended. Cutting corners on the provisional makes it useless.

Provisionals Extend Patent Life. An advantage of filing a provisional followed by a non-provisional is longer patent protection. The life of a provisional is one year. The life of a non-provisional patent extends 20 years from its own filing. When a non-provisional application is filed near the end of the provisional’s life the total protection extends to nearly 21 years.

Provisionals Delay Date of Award. The disadvantage is a delay of the patent award. Because provisionals are not examined, they postpone the examination of the invention by the USPTO, lengthening the prosecution and delaying up to a year, the date of the patent award. Given that the USPTO currently has a huge backlog (about 5 years for software inventions,) filing a provisional also postpones the time when royalties can be collected. In addition, a provisional may not be as convincing as non-provisionals to investors who may need to know for sure whether the patent will be awarded. Filing a provisional followed by a non-provisional reduces the upfront cost but is more expensive in the long run.

Provisional are great for small independent inventors with limited means and incompletely defined ideas, who need patent protection while they test the profitability of their invention during the initial manufacturing and marketing phase.

The best advice for the inventor is to file a provisional if the invention is not clearly defined and in a state of constant improvements and if the competition is intense.

On the other hand, when the invention is clearly defined and stable, when competitive activities are minimal and when the inventor is convinced of the profitability of his invention, he should apply directly for a non-provisional patent.

For archived newsletter and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as being legal advice. ©2008 by George Levy

First to File - A Job Killing Bill

Congress, lobbied by large multinational corporations, is on the verge of passing bill HR1249, the “America Invent Act” a great threat to the ability of our country to innovate. Our patent system, a carefully balanced system that has made America the envy of the world is about to be dismantled.

This new bill replaces the first to conceive by a first to file system. It recognizes the first person who submits an invention to the patent office as the true inventor.

The bill also eliminates the one year grace period defined as the time interval starting on the day that the inventor shows, sells or offers to sell his invention to the public, and ending on the day he files it. During the grace period the inventor retains ownership of the invention as long as he can prove that he diligently worked at developing it and did not abandon it. The grace period provides free protection to the inventor, even before a patent application is filed, and is a deterrent to anyone else who may be tempted to copy the invention. It allows the inventor to talk about his invention, solicit funding, discuss it with designers and manufacturers, approach distributors, run focus groups, perform small market runs etc.

While the first to conceive part of the bill may be likened to the bathwater because the number of inventors who actually rely on the conception date vs. the filing date is extremely small (less than 100), the grace period is the baby about to be thrown out. Its elimination tilts the playing field in favor to multinationals and market incumbents and is detrimental to small inventors and innovators in the following ways:

1) Inventors will race to the patent office to file, often before their invention is fully developed, resulting in additional expenses.

2) Small inventors will be placed at a disadvantage with respect to large companies who have all the engineering, manufacturing, marketing and financial resources to bring an invention to market.

3) In case of IP theft, the bill allows an inventor to dispute the rights of the thief, but only if the thief patents the invention. Proving theft is extremely difficult and the inventor will be at a great disadvantage. Stopping theft will be impossible if the thief opts not to file for patent.

4) A single offer for sale or public demonstration one day before filing a patent application can irretrievably destroy the ability of an invention to be patented.

5) The bill is poorly written, favors large corporations, and will result in numerous lawsuits.

6) The real problem at the patent office is the lack of funding caused by the diversion of filing fees to other government activities. The bill does not stop this practice.

H.R. 1249 is a job killing bill opposed by a many small business and individual inventor that includes the National Small Business Association, the IEEE-USA (the country's largest society of engineers), the U.S. Business and Industry Council and others. These smaller American business advocates all say that Congress should drop H.R. 1249 and its provisions written by large multinationals and pursue instead a bill that benefits the entire country. This is especially important since smaller American businesses have to create new jobs to replace the jobs outsource by the multinationals.

Please tell your congressman or congresswoman how, you, the small inventors, businesses and startups need a strong patent system to create new products, jobs, and wealth. Please urge him or her to oppose this bill for the above stated reasons including its effect on the grace period and its deleterious effect on innovation in this country. Telephone calls are more effective than emails but I have included information for both. In the San Diego area the persons to call are:

Senator Barbara Boxer: (619) 239-3884
http://boxer.senate.gov/en/contact/policycomments.cfm

Senator Dianne Feinstein Phone: (619) 231-9712
Fax: (619) 231-1108

http://feinstein.senate.gov/public/index.cfm?FuseAction=ContactUs.EmailMe

Representative Susan Davis: (619) 280-5353
Fax: (619) 280-5311
https://susandavisforms.house.gov/forms/writeyourrep/

Representative Duncan Hunter: (619)448-5201Email: https://forms.house.gov/hunter/webforms/zipauthen_presidential.shtml

Representative Brian Bilbray: (858)350-1150
https://bilbrayforms.house.gov/contact/email-me.shtml

Representative Darrel Issa: 760-599-5000
http://issa.house.gov/index.php?option=com_content&view=article&id=597&Itemid=73

Bob Filner (619) 422-5963

http://www.house.gov/filner/email.htm

For more information about this topic go to the excellent article by David Boundy at Patent Docs.

For the presentation that I gave at the San Diego Inventor’s Forum on 04/14/2011 go to http://www.patentsandventures.com/presentations

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as being legal advice. ©2011 by George Levy