Write like a Pro(visional)

A Provisional patent application (a “Provisional”) is a very popular tool for companies and entrepreneurs who wish to protect their innovative products and technologies. Let’s review the details of this legal tool and understand its pros and cons.

First and foremost, a provisional patent application is a legal document filed commonly in the United States Patent and Trademark Office (USPTO). Similar to a standard, “full” patent application, the provisional patent application should disclose an invention. Unlike the standard application, Provisionals do not mature into an issued patent unless the owner files a regular non-provisional patent application within one year from the filing date of the provisional.

A provisional application includes a description of the invention, but does not require formal patent claims and additional forms required in regular patent applications. However, it’s highly recommended to thoroughly describe the invention and the various options to implement it in order to increase your chances to enjoy the benefit of the filing date of the provisional. A provisional application can establish an early filing date in patent applications claiming the priority date of the invention as long as the invention is adequately disclosed in the provisional application. Entrepreneurs that send 2-3 pages of text, or worse – a product’s technical presentation - will realize too late that this type of provisional cannot form a basis for a patent application later on. It rarely works. The provisional application should describe the invention in a manner that enables a person skilled in the art (think of a software engineer with 2-3 years of experience) to make and use the invention.

A Provisional has many advantages:

1.     The simplicity of its filing, which requires only one form, and a simple procedure at the end of which you receive a submission number within a few minutes.

2.     There are no formal requirement to prepare claims, so the product/technology can be described more broadly and in a free manner. Giving up the need for claims saves time and reduces the patent attorney’s fee, since writing the claims is the complex (and important) part of the patent application.

3.     Another benefit of the provisional is the low filing fee ($70 for private inventors, $140 for small companies and $280 for large companies) [relatively low] the fee required to file a standard patent application.

4.     The provisional application is only published if the company decides to file a non-provisional application. Otherwise, the Provisional’s content remains confidential. This is important in cases where there are many research directions, and the company wishes to keep all options open, and hide some research leads from competitors.

5.     Provisionals enable companies to file patent applications flexibly. In my opinion, this is the most important benefit of a provisional. From the day the Provisional is filed, the company has 12 months to file a patent application. If the product has evolved, which is reasonable in many companies in early stage development, it is worthwhile to file additional provisional applications that describe milestones throughout the development process during the 12 month period. At the end of the 12 months, the company can decide which provisional applications will be included in the standard patent application and which features should be left out, or even protected in another patent. Standard patent applications are not flexible. Once a standard patent application is submitted, it is not possible to add details, except by submitting an additional application, which receives a new submission date. The additional application results in a great investment, at a stage where it is not yet clear to the company which aspects of the product are worth protecting.

 

The main disadvantage of provisional applications is the delay in patent issuance. A company is protected only after the patent application is issued and not from the date the Patent application was filed. In case a provisional application is filed, companies tend to file an international PCT application within 12 months, and the patent application is submitted in the various countries only at the national stage (30 months from the provisional application filing date). This approach effectively reduces the time duration in which the invention is protected and the business uncertainty remains over time. For example, when filing patent applications in the various countries 30 months from the provisional application filing date, examination of these patent applications begins 4-5 years from the beginning of the process, which in this time the technology may become irrelevant.
 
The R&D process and lack of filing additional provisional applications results in a gap between the invention [the product changes during R&D ] the company wishes to sell, and the content submitted in a provisional application. In worst cases, companies file a provisional application, develop the product, and sell a more advanced version of the product without protecting the developments not described in the provisional application. The company’s own developments may be used by examiners against the company’s own patent applications, if published or sold before filing the non-provisional application is filed, preventing the company from protecting its inventions.
 
Bottom line - companies should use provisional applications only if this decision serves their business needs and not as a default. Remember that the real asset is an issued patent, not submission of Provisionals/standard patent applications, and build a plan to reach this goal.
 
Jonathan Erez, Advocate and Patent Attorney, partner at Erez Patents.
www.erez-ip.com  

A boutique hi-tech patent attorneys firm. We consider our firm a home for tech companies and entrepreneurs, and advise them as if it was our invention. Transparency and trust are must, as we verify that our clients have all the data they need to take educated decisions.


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