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Patents / United States and Foreign Patent Practice / Provisional U.S. Patent Applications

Provisional U.S. Patent Applications

Background

One of the fall outs from implementing GATT in the United States is the provisional patent application. While certain other jurisdictions have had provisional patent applications for years, this is a first for the United States. Provisional patent applications have been able to be filed since June 8, 1995, when certain GATT mandated patent law changes came into effect, including the new twenty year patent term measured from an application's effective filing date.

Does GATT dictate adoption of Provisional Patent Applications? Certainly not! Provisional Patent Applications are being provided out of a sense of fairness. Allow us to explain . . .

Purpose and Effect

As noted above and reported elsewhere in these pages, the lifetime of a U.S. Patent is now twenty years from its effective filing date.[1] For foreigners that might well be 21 years from the filing date in their home country patent application if they wait until the end of the one year time period for filing an application in the United States claiming priority to their home country application under the Paris Convention. In order to give U.S. applicants basically the same privilege, the provisional patent application was created.

If a provisional patent application is filed first, then a regular U.S. patent application may be filed within one year claiming priority from the provisional application. The patent subsequently granted on that regular U.S. application will then also have a lifetime of 21 years from the filing date of the provisional application, provided the regular application is filed at the end of the one year time period. It is to be noted that the provisional patent application does not mature into a patent -- rather it expires after its one year lifetime. It simply gives a subsequently filed regular patent application the possibility of a 21 year lifetime measured from the filing date of the provisional application.

Although provisional patent applications were created to give U.S. applicants parity with foreign applicants, there is no requirement that the applicant be a U.S. National or Resident. Foreign applicants can also file provisional patent applications, they cannot, however, claim priority to another patent application in a provisional application. Nevertheless, foreign patent applicants may well want to file provisional patent applications in the United States. The reasons why foreign applicants may find it a good idea to do so are discussed below.

A provisional application differs from a regular application in a number of ways:

1. Provisional applications are not examined on their merits and cannot mature into issued patents - thus, once they serve their purpose, they expire.

2. The official filing fees are lower: $160 for large entities and $80 for small entities - but the usual filing fees[2] must still be paid when the regular patent application is subsequently filed.

3. The paper work involved in filing a provisional application is less than for a regular patent application. Also, the provisional application does not need to include claims or acknowledge the prior art. However, it does require a full description of the invention.

4. Provisional applications cannot claim priority from other applications. But a regular patent application can claim the benefit of multiple provisional applications or the benefit of a combination of provisional and regular filings and/or a foreign application from which priority is claimed under the Paris Convention, so long as the regular patent application is filed within one year of such applications.[3]


Provisional Patent Applications - Advantages and Disadvantages

So far provisional patent applications sound pretty good. One might note that there are few disadvantages even if the provisional patent application is properly used. If it is improperly used, well then that is a different story, as we shall soon see.

As noted above, provisional patent applications may be filed by both U.S. and non-U.S. applicants. As is turns out, the advantages (and disadvantages) to a U.S. applicant differ from those of a non-U.S. applicant. As such, the benefits and drawbacks of utilizing provisional patent applications differ for such applicants and, therefore, these matters are treated separately below for U.S. and non-U.S. applicants.


Advantages for U.S. Applicants:

1. Provisional patent applications are relatively inexpensive to file.

2. The eventually filed regular application will then have a life which might be as long as 21 years from the filing date of the provisional application.

3. The regular application filed within one year does not have to be identical to the provisional application it replaces. Thus, the regular application can serve the function of a continuation-in-part application[4]. A further advantage is that the patent issuing on that regular application has a twenty year life from its filing date and not the filing date of the provisional application. (If the provisional application had started out life instead as a regular application and the second application were a regular continuation-in-part application, the patent's lifetime would be based on the filing date of the first application, i.e., it would be up to one year shorter). However, if new matter is added to the regular patent application, the applicant must comply with the best mode requirements of U.S. Patent Law and also be aware that they do not have the benefit of a filing date for the new matter until such time as the regular patent application is actually filed.

Disadvantages for U.S. Applicants:

1. Since provisional patent applications are easy to file, not to mention the fact that they carry the name 'provisional', a fair number of these applications may be hastily drafted. If regular patent applications with fuller disclosures are not filed until the one year time period for filing a regular application is nearly expired, other parties may file conflicting applications (with better disclosures) in the interim and the first-to-file party may well loose in a contest with the second-to-file party if the disclosure of its provisional application is deemed inadequate to support the claims of its subsequently filed regular application.

2. Even more trouble for the U.S. applicant will arise if the provisional patent application is deemed by the patent authorities of other countries not to support a claim to priority by a subsequently filed foreign patent application. If the applicant publicly disclosed the invention in the interim, the applicant may discover that the subsequently file foreign applications are barred by the applicant's actions in publicly disclosing the invention during the normal one year priority time period.

3. Another date must be remembered and entered to a docketing system. If you miss the one year date for filing the regular application, you cannot claim the benefits of the provisional application.

4. Under the original version of the Patent Law that added the possibility of filing provisional applications, it was not absolutely clear whether a provisional patent application could be used as the basis for making a priority claim for filing patent applications in other countries under the Paris Convention. This problems seems to have been overcome by more recent changes to the U.S. Patent Law.

Advantages for Foreign Applicants:

1. Provisional patent applications are relatively inexpensive to file.

2. Provisional patent applications need not be filed in the English language.[5] As such, they can be easily filed about the same time that the foreign applicant is filing their original application in their home country.

3. A U.S. patent, once granted, becomes prior art, against later filed U.S. patent applications, as of its filing date under 35 U.S.C. Section 102(e). If it is based on a provisional patent application, the resulting patent's 102(e) date is the date that the provisional patent application was filed. If based solely on a home country patent application to which priority is claimed, the 102(e) date is only the actual filing date of the regular U.S. patent application. Thus, foreign applicants can obtain earlier 102(e) prior art dates for their U.S. Patents if they base them on provisional applications instead of basing them solely upon home country applications.

4. Under 35 U.S.C. Section 102(b), a U.S. patent application must be filed within one year of the publication of an invention. The inventor can still obtain a valid U.S. Patent if the inventor can evidence the fact that the inventor made the invention before the publication occurred. Historically, foreign patent applicants have had difficulty in taking advantage of this aspect of U.S. Patent Law since the evidence had to show completion of the invention in the United States. With the GATT mandated changes to U.S. Patent Law and effective January 1, 1996[6], the invention will no longer have to have been completed in the United States. As such, provisional applications can then give foreign applicants an additional one year time period under 35 U.S.C. Section 102(b) if the provisional application is filed about the same time that the home country application is filed.

5. The regular application filed within one year does not have to be identical to the provisional application it replaces. Thus, the regular application can serve the function of a continuation-in-part application, but without having the down side of an earlier filing date (for the purpose of calculating the term of the resulting patent). However, if new matter is added to the regular patent application, the applicant must comply with the best mode requirements of U.S. Patent Law and also be aware that they do not have the benefit of a filing date for the new matter until such time as the regular patent application is actually filed.

6. An eventually filed regular application will have a life which might be as long as 21 years from the filing date of the provisional application, just like a regular application filed under the Paris Convention claiming priority to a home country application. This advantage is probably only of interest to applicants from non-Paris Convention countries.

Disadvantages for Foreign Applicants:

1. Added cost (but not a great deal of added cost).
2. If a foreign applicant chooses to use this procedure, they should file the U.S. provisional application about the same time that they file their home country application[7]. That means that they must be alert to file the provisional application right away and not rely on simply filing a Paris Convention application almost one year later.[8].

3. If filed in a language other than English, an English-language translation must be filed in due course.

4. The expiry of the one-year life of a provisional patent application is different than the end of the one year grace period under the Paris Convention if the date falls on a holiday or weekend (i.e. any day the United States Patent and Trademark Office is closed).

Combating the Disadvantages

There are certain strategies for combating these disadvantages. We suggest following up a hastily prepared provisional application with a better draft, which is then filed as a regular U.S. Patent Application, as soon as practicable and preferably within a month or two after filing the provisional application. We also suggest filing a regular U.S. Patent Application before any public disclosure of the invention occurs if the filing of foreign applications is of interest since, although most major foreign patent offices have indicated that they will respect priority claims under the Paris Convention based on an U.S. provisional application, this view has been challenged by some commentators and the issue is ultimately one for the courts to decide in many different countries. Thus, do not use the provisional patent application to lull yourself into a false sense of security if the provisional application is anything less than a full disclosure of the invention or if foreign corresponding applications are of interest to you. Once a good, full description of the invention has been prepared, file a regular U.S. patent application. Do not wait for the one year time period nearly to expire, unless you are certain that the extra few months of patent protection makes the added risk in waiting worthwhile. Since many technical arts change quickly, the extra few months of patent protection near the end of the patent's twenty year lifetime may well be meaningless.

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