Provisional Patent Applications: Convenient to File, but Handle with Care to Avoid Disastrous Consequences

Introduction

In the words of the U.S. Patent and Trademark Office (“USPTO”): “A provisional patent application allows you to file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement,” yet such an application “provides the means to establish an early effective filing date” and “allows the term ‘Patent Pending’ to be applied in connection with the description of the invention.”

But inventors would be wise to not let the informal nature of provisional patent applications (“PPAs”) lull them into a false sense of security. If a PPA is not prepared with sufficient detail to meet an applicant’s priority goal, or if it is not followed up on correctly, then the intended priority rights may not be fully realized or worse, lost in their entirety – with the potential result of preventing any patent from ever issuing for the invention.

Points to Consider Regarding Provisional Patent Applications

PPAs are much less expensive to prepare and file than are the more formal regular patent applications, technically known as “nonprovisional” or “utility” patent applications. PPAs may be perceived as a way for the inventor / would-be patent owner to get a “foot in the door” toward obtaining an early priority date for the invention before committing the more substantial time and resources required for preparation of a regular patent application. While a PPA can indeed provide that priority benefit, certain points must be kept in mind, most importantly:

• Only 12 months to live. PPAs remain alive for only 12 months after filing, after which time they are automatically abandoned. They are not examined, and patents do not issue from PPAs. Instead, a patent issues, if at all, from a regular application that may (or may not) claim the benefit of the PPA filing date.
• Priority claim must be timely. A claim to the benefit of the PPA filing date can only be made in a regular U.S. or foreign patent application filed within the aforementioned 12-month period. As discussed in the linked article, the resulting priority benefit can be critically important to minimize the universe of “prior art” citable against claims in the regular patent application – a universe that can otherwise include the inventor’s own public activities surrounding the invention. One can submit a delayed benefit claim between 12 and 14 months after the PPA filing date, but the delay must have been unintentional and, as mentioned in the linked article, certain USPTO fees must be paid to make a delayed claim. See a USPTO web page for a more detailed discussion of requirements.
• Priority benefit is proportional to quality of invention disclosure in the PPA. Even if timely claimed, the priority benefit from the PPA filing date only extends to subject matter that is common to the PPA and to the regular patent application. Therefore, the degree to which a PPA serves as a priority document is directly proportional to the quality and detail of the invention disclosure in the PPA. As the linked article states: “Drawings are your best friend to make sure you are disclosing as much as possible, and then you write at least one paragraph (hopefully more) describing what is shown in each drawing.” Of course, the higher the quality and detail desired in the PPA, the more expensive the PPA will be to prepare, if prepared by a patent attorney or agent (highly recommended!). The inventor must therefore balance budgetary and timing considerations against how much detail is desired in the PPA.
• Inventor can claim priority to more than one PPA. Additional invention development commonly occurs after the filing of a PPA. One or more subsequent PPAs can disclose the new developments. A regular patent application can then claim the benefit of the filing dates of all of the PPAs, if that regular application is filed within 12 months from the filing date of the earliest PPA disclosing the invention. Care should be taken in this circumstance that the PPAs are consistent with one another in their terminology describing the invention.
• Severe consequences may result from “refiling” a PPA. It is possible to “refile” a PPA by filing a new PPA plus an express abandonment of a previously-filed PPA. However, the linked article warns: “it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period.” That is because: “If you refile a provisional patent application, you are establishing a new priority filing date. You are NOT entitled to capture the original provisional filing date.” If invalidating “prior art” arises between the time the two PPAs were filed, then the inability to claim priority to the original PPA would directly result in destruction of any chance of getting a patent. Although, as mentioned in a comment to the linked article, certain circumstances may counsel in favor of refiling a PPA or otherwise abandoning an original PPA, such actions need to be considered very carefully in view of the stated risk.

Conclusion

PPAs provide a convenient way to obtain an early priority date for one’s invention, but to actually attain that benefit, and to avoid possible destruction of the ability to get a patent, PPAs need to be handled correctly. Consultation with a USPTO-registered patent attorney or agent in this area will maximize the likelihood of a successful result.