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Filing a Provisional Patent Application – Applicant Beware BZ Spring 10 reduced 25/3/10 15:22 Page 68 PRODUCT PROTECTION AND THE LAW John W. Boger, Esq. Heslin Rothenberg Farley & Mesiti P.C. Filing a Provisional Patent Application – Applicant Beware The world changed as we knew it on June 8, 1995, when the Convention. With the genesis of the provisional applica- United States Patent and Trademark Office (“USPTO”) was tion, the playing field was leveled by giving U.S. appli- required to implement certain provisions from the GATT cants the same opportunity as foreign applicants to extend Uruguay Round Agreements. One of the modifications that the lifetime of the patent to twenty-one years from the fil- occurred as a result of the GATT Agreements was that the ing date of the provisional application. 7HOHÀH lifetime of a United States Utility Patent was changed from 5307 9 Phone 17 years from the issue date of the patent to 20 years from What exactly is a provisional patent application? People the effective filing date of the patent application. routinely call this statutory creation a wide variety of ZZZW names, including: “manu- 7H script application,” “dirty Depending on the type of technology, large companies provisional application” and will use provisional patent applications as a tool to capture a “quickie application.” the potential extra year of patent eligibility that will These alternative names con- vey the meaning that provi- occur at the end of the term. sional applications are less extensive than the typical non-provisional utility appli- The second change, and is the subject of this article, was cation and can usually be completed in a short period of the addition of being able to file a provisional patent appli- time. This portrayal is accurate to a point, but one must be cation. The U.S. applicants parity with foreign applicants careful not to fall into some of the traps that surround use under GATT. of the provisional application. Prior to the 1995 changes, there were only three types of The provisional application is a U.S. national application patents available to inventors: utility, design and plant. and is filed without any formal patent claims, an oath or Plant patents are quite rare and design patents are relative- declaration by the inventor, or any information disclosure ly common, and utility patents are the most desired but are (prior-art) statement. Hence, the “less expensive” character- the hardest to obtain and the most expensive. Before the ization. The application provides a means for establishing creation of the provisional application, foreign applicants an early effective filing date and allows the applicant to use had an advantage in that they could extend the lifetime of the terms “Patent Pending” in relation to the disclosed their U.S. patents to 21 years as determined by the filing invention. Allowing one to use these words is, in and of date of their home country patent application. This one- itself, a tremendous value to most applicants and corpora- year extension would occur if the foreign applicant tions. A critical limit to provisional applications is that its delayed filing the U.S. application for the permitted one- pendency only lasts for 12 months from the date of filing, year period (following their filing of the parent application and this time period cannot be extended. Thus, an appli- in their home country) and then claimed priority back to cant must act during this one-year period or risk losing the 6SHFL their home country application under the Paris advantageous earlier priority date. 5 Phone ZZZW 7H 68 BONEZONE • Spring 2010 BZ Spring 10 reduced 25/3/10 15:23 Page 70 Mills_ad_aug_t PRODUCT PROTECTION AND THE LAW Certain requirements must be met by the applicant in address of the inventor or filing attorney; and (vi) if appli- order for the USPTO to grant the provisional application cable, providing the name of any U.S. Government agency a filing date. First, the provisional application must be that has a property interest in the application. Many filers made in the name(s) of all of the inventor(s). This is use “home grown” cover sheets, but the more prudent sometimes a difficult task because the application may be step would be to use Form PTO/SB/16, an example of filed without claims, and inventorship is determined by which is provided at the end of this article (Courtesy of who contributed to what is being claimed. The applica- the USPTO). This printable form can be found at the tion can be filed up to 12 months following the date of USPTO website at www.uspto.gov/web/forms/index. If the first sale, the first offer for sale, public use or publica- the application meets the above requirements, a filing date tion of the invention. One needs to be keenly aware that will be accorded to it. Then the contents of the application such pre-sale invention disclosures may preclude patent- will remain in confidence at the USPTO as no formal ing in foreign countries. The USPTO will only record a fil- examination on the merits will occur, nor will the applica- ing date to a provisional application when the application tion be published. includes a written description of the invention that com- plies with U.S. patent law. Specifically, the written The best way to use the provisional application depends on description must disclose the manner and process of mak- numerous factors and circumstances. Strategically, compa- ing and using the invention in such full, clear, concise nies and academic institutions may use provisional applica- and exact terms so as to enable any person skilled in the tions in different ways. Depending on the type of technology, art to make and use the invention (See 35 U.S.C. §113). large companies will use provisional patent applications as a Thus, the applicant must satisfy the long-standing tool to capture the potential extra year of patent eligibility “enablement” standard that is required of non-provisional that will occur at the end of the term. A review of the provi- applications. The reason for this disclosure requirement sional application filings shows that companies that operate will be discussed later in this article, as will the potential in the pharmaceutical and medical device technology fields fallout if the provisional application fails to include the use provisional applications at a high rate, whereas compa- required common subject matter in the written descrip- nies in the electrical and electronics fields typically file fewer tion with the later-filed non-provisional application. of these types of applications. (See PatentlyO-Blog, July 26, 2009, patentlaw.typepad.com.) Comparing start-up ventures to estab- lished companies, start-ups generally use Start-ups generally use provisional applications provisional applications more frequently more frequently because of cost pressures. because of cost pressures. It’s an easy C way to build value and bulk in their intellectual property (IP) portfolios, and it provides early protection of inventions In addition to these disclosure requirements, to be a “com- while they still are making their way through the product plete” provisional application, the applicant must include development cycle. As a result, many startups adhere to the the filing fee and a cover sheet. The filing fee is currently philosophy of “filing early and often” with provisional $220 for large entities and $110 for small entities. In com- applications. Academic institutions may use provisional parison, a non-provisional application filing fee is $330 applications for different reasons than their corporate coun- and $165, respectively. One needs to remember that for terparts. Cost issues, though, play a major rule in the high non-provisional applications, a search fee ($540 and $270) use by universities of provisional applications. Universities and an examination fee ($220 and $110) must also be paid frequently use the 12-month application pendency to shop Since on the date of the filing. Clearly, in the aggregate, the fees the technology and attempt to engage a corporate partner for vative for filing a provisional application are much less costly future invention development and possible licensing. than a non-provisional application. The requirements of Universities are also in a unique position in that their inven- loane the cover sheet include: (i) identifying the application as a tor pool comprises professors who operate under pressures strate provisional application; (ii) listing the name(s) of the of “publish or perish.” Thus, these institutions are forced to depth inventors; (iii) listing the inventor(s) residence(s); (iv) if use provisional applications as a tool to combat inadvertent applicable, listing the name and registration number of disclosure by the inventors/professors who are actively on So let the filing attorney; (v) providing the correspondence the lecture or publishing circuit. 70 BONEZONE • Spring 2010 BZ Spring 10 reduced 25/3/10 15:23 Page 72 PRODUCT PROTECTION AND THE LAW As noted above, provisional applications have a non- ing date and may be invalid. See New Railhead Manufacturing, extendable 12-month life span. Importantly, the benefits of L.L.C. v. Vermeer Manufacturing Company, 298 F.3d 1290, the earlier filed date cannot be claimed if during this 12- 1297 (Fed. Cir. 2002). month period a non-provisional application is not filed. It is critical to understand that a patent cannot issue from a pro- The applicant filing a provisional patent application should visional application unless one of the following two actions also be aware that: (i) provisional applications are not exam- are taken. First, a provisional application may be converted ined on their merits; (ii) provisional applications may not be to a non-provisional patent application by filing a grantable filed for design applications; (iii) the benefit of the provision- petition with the required fees (See 37 C.F.R.
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