Chapter 10.2

Provisional 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 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 . 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.

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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 2.3 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. 2.4 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

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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 2.5 Preserve a non-U.S. priority date German inventor could file a U.S. utility pat- Most countries outside of the U.S. award 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. Still, as members of the Paris fore committing to the high costs of filing in the Convention, patent applicants in Convention United States, he or she could simply file a U.S. member-nations have up to 12 months to apply provisional application. Since provisional applica- for patent protection in the United States in order tions are not required to be written in English or to preserve an international priority date. to include claims, drawings, or other formalities, the German inventor could simply file a copy of 2.6 Avoid statutory bars his or her German application in German as a Pursuant to 35 U.S.C. § 102(b), if an invention is U.S. provisional application. In this manner, the published anywhere in the world more than one German inventor could preserve a U.S. filing date year before a U.S. patent application for that in- and avoid a § 102(b) statutory bar, all at a very vention is filed, the publication will act as a statu- reasonable cost. tory bar to obtaining a U.S. patent. This statutory bar is not limited to publications provided by an 2.7 Preserve absolute novelty for foreign filings invention’s first inventor. If, for example, a second Most countries outside of the U.S. require abso- inventor independently conceives and publishes lute novelty, which means that, as a prerequisite to the invention more than one year before the first receiving patent protection, a patent application inventor files in the United States, the second in- must be filed before any public disclosure of that ventor’s publication will bar the first inventor from invention. In these absolute novelty countries, any ever obtaining a U.S. patent on that invention. public disclosure of an invention prior to filing an To illustrate, suppose inventor X, a German application for patent acts as a bar to patentabil- inventor, invents a novel widget on January 1, ity. As such, it is imperative for inventors seek- 2005, and accordingly files a German patent ap- ing foreign patent protection to preserve absolute plication describing the widget in April 2005. novelty worldwide. Provisional applications may Independently, a French inventor, inventor Y, provide an easy, cost effective way to preserve ab- conceives of the same widget and publishes it on solute novelty; however, this must be approached March 1, 2005 in a French publication. Under with caution, as adequate disclosure is required. U.S. law, the German inventor may rely on his or There is still a general lack of consensus about

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how courts in various foreign jurisdictions will will always increase the overall cost of obtaining regard a U.S. provisional application as a basis for a patent. This is especially true when multiple priority. Even so, if an inventor wished to pub- provisional applications are filed to cover various licly disclose an invention as part of a presenta- aspects of an invention. tion, the inventor could preserve absolute novelty by filing a copy of all of the presentation and 3.2 Disclosure of invention handout materials as a provisional application. In Although provisional applications do not have all this manner, the inventor could both preserve a of the formal requirements of utility patent appli- U.S. filing date and preserve absolute novelty in cations, provisional applications must nonetheless Paris Convention nations, or in nations that have meet the disclosure and enablement requirements acceded to the WTO (as the TRIPS Agreement of utility patent applications. That is, provisional [Trade-Related Aspects of Intellectual Property applications must include a complete, adequate Rights]) incorporates the Paris Convention). This disclosure of an invention, a disclosure of the best includes the majority of the world’s nations. mode of the invention, and any drawings nec- essary for understanding and/or recreating the 2.8 Patent pending described invention. If a provisional application Once a provisional application is filed, an inventor cannot adequately support the entirety of a cor- is permitted to apply the phrase “Patent Pending” responding utility application, then only those to products embodying the invention. Use of this aspects that are adequately supported in the pro- phrase indicates to the public that the marked visional application will be entitled to the provi- product or products is or are believed to be inven- sional application’s priority date. All other aspects tive and that any and all available patent rights of the utility application will have a priority date in the invention are being pursued. Application corresponding to the filing date of the utility ap- of the phrase also enables the immediate com- plication. In this regard, preparing a provisional mercial promotion of an invention with less risk application to fully support a later filed utility ap- of having the invention copied and/or stolen. In plication may be as time consuming and as costly addition, a “Patent Pending” notice gives official as preparing a utility application. notice to competitors and potential infringers, which may be particularly useful in establishing 3.3 Potential loss of trade secrets a claim once the invention Another concern relating to provisional applica- is formally patented. It should be noted that the tions is the potential lose of trade secrets. As ex- phrase “Patent Pending” does not give rise to en- plained above, although provisional applications forceable patent rights. It is only after a patent is do not have all of the formal requirements of issued that enforceable patent rights attach. utility patent applications, they must nonetheless adequately disclose and enable inventions. In at- tempting to satisfy these requirements, inventors 3. lIMITATIONS of a Provisional may disclose too much information, including in- Application formation they might later wish to retain as a trade Aside from the many advantages described above, secret. Once a provisional application is filed, all there are several limitations and disadvantages as- information disclosed will be incorporated into a sociated with filing provisional applications. later filed corresponding utility application. When the utility application becomes a patent, the entire 3.1 Increased overall cost provisional application will become public, and Although provisional applications are typically any potential trade secrets it contains may be lost. less expensive to prepare and file than utility pat- ent applications, there are costs associated with 3.4 One-year filing deadline the same. Filing a provisional application first, Once a provisional application is filed, an in- and then filing a corresponding utility application ventor must file a utility application claiming

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priority to the provisional application within one Provisional applications may not be amend- year. Failure to file a utility application within the ed. If certain aspects of an invention are devel- one-year period will result in the provisional ap- oped or changed after a provisional application plication automatically being abandoned, which has been filed, an inventor will be required to file may prevent the inventor from ever patenting the another application to reflect these developments invention. or changes. Similarly, if an inventor accidentally discloses 3.5 False sense of security secret information in a provisional application, Filing a provisional application may give an in- the inventor will be precluded from going back ventor a false sense of security. Although filing a and amending the provisional application to re- patent application does provide some protections, move the secret information. In this scenario, the it does not provide any enforceable patent rights. inventor would have the option of abandoning Furthermore, provisional applications never ma- the provisional application and possibly hav- ture into patents. If an inventor falsely believes he ing the option of filing another provisional - ap or she is adequately protected by a provisional ap- plication that excludes the secret materials. This plication, he or she may delay filing a utility ap- would, however, reset the priority date. plication. And if an inventor fails to file a utility application during the one-year period, the pro- visional application will automatically be aban- 4. Conclusion doned thereby preventing the inventor from ever Provisional applications provide numerous ad- patenting the invention. vantages for both domestic and foreign inventors, which is why they are widely used and are often 3.6 Other potential limitations integral to successful patent strategies. There are There are other limitations to filing provisional also, however, certain risks and limitations associ- patent applications. For example, since filing a ated with provisional applications, so filing provi- provisional application delays the filing of a util- sional applications may not always be desirable or ity patent application, any patent that may ulti- appropriate. Accordingly, before deciding wheth- mately issue may also be delayed. Depending on er to file a provisional application, care must be the inventor’s (or patent owner’s) patent strategy, taken to properly assess: such a delay may not be desirable. • the nature of the invention(s) It is important to note that both provisional • the particular needs of the inventor and utility patent applications trigger the time line (or company) for filing applications under the Patent Cooperation • the inventor’s (or company’s) overall Treaty (PCT) and the Paris Convention. Since in- patent strategy ■ ternational patent applications must be filed within one year of a U.S. filing, the high costs of inter- RICHARD L. CRUZ, Intellectual Property Attorney, DLA Piper national filing will be incurred within one year of US LLP, 1650 Market St., Suite 4900, Philadelphia, PA, filing a provisional application. 19103, U.S.A. [email protected]

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