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Provisional Patent Applications: Advantages and Limitations RICHARD L Chapter 10.2 Provisional Patent Applications: Advantages and Limitations RICHARd L. CRUZ, Intellectual Property Attorney, DLA Piper US LLP, U.S.A. ABSTRACT Provisional patent applications were estab- In the United States, provisional patent applications can lished in the United States to place domestic in- provide an additional year of patent protection, for a to- ventors on an equal footing with foreign inventors. tal of 21 years from the initial filing date. With such an extension, a provisional application provides parity with Before the advent of U.S. provisional applications, foreign applicants who, pursuant to the Paris Convention, foreign (Paris Convention signatory) applicants may file for a U.S. patent within 12 months of the foreign could claim the benefit of a foreign priority date, filing. Provisional applications have both advantages and yet have their U.S. patent term measured from a disadvantages, so proper management is essential. The ad- vantages include the preservation of a priority date imme- later U.S. filing date. Foreign inventors were thus diately after an invention is conceived, a one-year delay granted a term of patent protection that could for further developing the invention, an extra year of pat- last for 21 years. U.S. applicants, on the other ent protection, and constructive reduction to practice of hand, were disadvantaged: their patent term was the invention. In addition, provisional applications pro- measured from their initial U.S. filing date and vide an inexpensive way to avoid possible statutory bars and preserve absolute novelty for foreign filing purposes. limited to 20 years. Effective June 8, 1995, do- They also enable the use of the phrase “Patent Pending” to mestic applicants were given the opportunity to mark products embodying the invention. The disadvan- file provisional applications, thereby establishing tages include a possible increased overall cost of obtaining U.S. priority dates that would not count against a patent, potential loss of trade secrets, and a false sense of security. An inventor must also file a nonprovisional any resulting U.S. patent term. Allowing for U.S. application within one year, and the subject matter of a patent protection that lasts 21 years from an ini- nonprovisional application is limited to subject matter in tial filing date, this change in policy established the provisional application. parity between U.S. and foreign inventors. As an informal application, a provisional pat- ent application does not require all the formal 1. Introduction elements of a utility patent application. For ex- Beginning in 1995, inventors were able to file ample, provisional applications are not required provisional patent applications in the United to include formal claims, a declaration of inven- States. This informal type of patent application torship, or drawings, all of which are required for establishes a priority filing date and provides in- utility applications. Instead, all that is required is ventors one additional year to prepare and file a a written description of an invention and a cov- formal utility patent application. ersheet that, among other things, identifies the document as a provisional patent application. Cruz RL. 2007. Provisional Patent Applications: Advantages and Limitations. In Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org. © 2007. RL Cruz. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommer- cial purposes is permitted and encouraged. HANDBOOK OF BEST PRACTICES | 897 CRuZ Unlike utility patent applications, provi- period that the invention is not commercially fea- sional patent applications are not substantively sible, he or she can avoid the substantially higher examined by a U.S. Patent and Trademark Office costs of pursuing a utility application. (PTO) examiner. Instead, they are reviewed by the application division of the PTO to ensure 2. An extra year of patent protection that the minimum filing requirements have been An issued patent gives an inventor the right to met. As a result, the legal cost of preparing provi- exclude others from using, selling, and/or of- sional applications is relatively low compared to fering to sell the patented invention for twenty utility applications. Similarly, since the PTO does years. This twenty-year patent term is calculated not have to perform a prior art search or analyze from the filing date of the inventor’s utility pat- provisional patent applications, the cost of filing ent application. The one-year delay between the these applications is also quite inexpensive when filing of a provisional application and the filing compared to utility applications. of a utility application does not count against the Aside from costs, several other factors should twenty-year patent term. As such, filing a provi- be considered when determining whether or not sional application provides up to an extra year of to file a provisional patent application. A few of patent protection, effectively extending the pat- their advantages and limitations associated with ent term to 21 years. provisional applications are outlined below. 2. Constructively reduce an invention to practice 2. Advantages OF A Provisional An invention is said to be reduced to practice APPlication when an inventor converts the inventive idea into something that is operable and capable of being 2.1 Preserve a priority date reproduced by others. Filing a provisional ap- Because they have fewer formal requirements, plication has the effect of constructively reducing provisional applications are simpler and generally an invention to practice, insofaras the invention less expensive to prepare and file. A provisional is adequately described so as to enable a person application may therefore be used to quickly and skilled in the art to reproduce it. By filing a provi- inexpensively obtain an official filing date for an sional application, a legal presumption is created invention immediately after the invention has that the invention was reduced to practice, albeit been conceived. An official filing date provides constructively, at least as early as the filing date unequivocal proof that an invention was con- of the provisional application. This presumption ceived at least as early as its filing date. may be very advantageous to an inventor, partic- ularly if another inventor claims to have invented 2.2 A useful one year delay the same invention first. Once a provisional application is filed, an inventor In the United States, an inventor is entitled to has up to one full year to file a formal utility ap- a patent if he or she is the first to invent a particu- plication. This one-year delay enables an inventor lar invention. If a dispute arises over who actually to further develop his or her invention, assess the invented the invention first, establishing a reduc- invention’s commercial potential, and seek finan- tion to practice date may be paramount to deter- cial support for further developing and/or patent- mining which inventor is entitled to the patent. ing the invention. In addition, the one-year delay In such disputes, the inventor who establishes the enables an inventor defer the bulk of the costs earlier reduction to practice date (for example, by associated with preparing and filing a utility pat- filing the earlier provisional application) will be ent application until he or she is confident that presumed to be the first to invent. The challeng- the invention is commercially viable, and/or until ing inventor, i.e., the inventor not deemed the he or she is able to secure financial support for the first to invent, may only overcome this presump- invention. If the inventor determines during this tion by forwarding evidence that establishes that 898 | HANDBOOK OF BEST PRACTICES CHAPTER 10.2 he or she (the challenging inventor) is entitled to her earlier invention date to predate the French an earlier reduction to practice date. Thus, filing publication date. However, if the German inven- a provisional application not only establishes an tor waits until after March 1, 2006 to file a U.S. early reduction to practice date, but it also shifts application, the French publication will be deemed the burden to any challenging inventor to prove prior art under 35 U.S.C. § 102(b) and will bar the that she or he invented the invention first. German inventor from obtaining a U.S. patent. To avoid this 102(b) U.S. statutory bar, the 2. Preserve a non-U.S. priority date German inventor could file a U.S. utility pat- Most countries outside of the U.S. award patents ent application concurrently with, or even after, on a first to file basis. That is, an inventor will be filing his or her German application. Pursuant entitled to a patent if he or she is the first to filean to the Paris Convention, the German inventor application for a particular invention, regardless would still have a period of one year after filing of whether another inventor was the first to actu- the German patent application to file a U.S. pat- ally reduce the invention to practice. As a result, ent application. However, the utility patent appli- many foreign inventors (and U.S. inventors seek- cation option could be quite costly, particularly ing international patent protection) seek to file since the German application would have to be patent applications in non-U.S. countries as soon translated into English and include U.S.-style as possible in order to preserve their foreign prior- claims, drawings, and other formalities. ity date. It should be noted that under U.S. law, As an alternative, if the German inventor was establishing a foreign priority date does not neces- not prepared to incur such an expense, or if he or sarily guarantee a specified period of time for filing she preferred to further develop the widget be- in the United States.
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