Pitfalls of Provisional Patent Applications

Pitfalls of Provisional Patent Applications

In one of our prior post (“How to Protect Your Tech Before Funding”), we discussed how a provisional patent filing strategy, when done properly, is a powerful tool to protect the key technology of a small business before receiving venture capital or other funding.  So, what about taking this strategy to its cost-cutting extreme, i.e., filing a pro se provisional patent application without consulting a registered patent attorney?

What is a Provisional Patent

Before we talk about that, let’s first review what a provisional application is.  A provisional patent application is an informal patent filing that includes a description of the invention, but without many of the formal requirements of a regular utility patent application.  In particular, it does not require claims, declarations, or information disclosure statements (i.e., citation of prior art documents).  In fact, some even file “coversheet” provisional patent applications, where the government filing transmittal coversheet is attached to an inventor authored disclosure, such as a white paper, a thesis paper, or a PowerPoint presentation.  A provisional patent application remains active for one year, during which time a utility application has to be filed in order to retain the benefit of the provisional filing date.

The Pitfalls

Because of how informal a provisional application is, it may be tempting for a small business to undertake the provisional patent application filing without the services of the aforementioned registered patent attorney.  BEWARE – pitfalls lie ahead.
  • First, the provisional patent application filing needs to describe the invention in sufficient detail to satisfy the multiple requirements of the patent laws (see 35 U.S.C. §112).  For example, the provisional patent application needs to describe the invention in sufficient detail to establish possession of the invention, enablement of the invention, and the best mode of practicing the invention. If the provisional patent application fails to describe the invention in the needed detail, the subsequent utility application will need to supplement the provisional filing, moving the effective priority date forward to the utility application filing.  The change in the effective filing date can be disastrous, particularly to foreign filing rights, because of intervening disclosures of the invention.
  • A second pitfall to pro se provisional patent application filings is that the foreign filing clock is started.  Pursuant to the Paris Convention (http://www.wipo.int/treaties/en/ip/paris/), the applicant now has one year from the provisional patent application filing date to file corresponding foreign patent applications.  Hence, when the utility patent application conversion deadline approaches, the applicant needs to consider and decide on foreign filing, which can be a very expensive decision to undertake.  Indeed, the filing fee for a Patent Cooperation Treaty patent application is several thousand dollars.  This decision can be made all the more complicated if the provisional patent application filing was deficient.
  • Yet another pitfall to be leery of with pro se provisional patent application filings is the failure to fully flesh out varying embodiments and permutations of the invention.  These potential embodiments are helpful in establishing a wide scope of the claims in future enforcement, and also providing fallback positions during prosecution.
  • Furthermore, the natural tendency of inventors is to describe their invention as it relates to the specific problem they are solving.  As such, most disclosures from inventors are written from a narrow point of view that can potentially be used to limit the scope of a later issued patent in a way the inventor did not intend if the disclosure is not carefully revised by a skilled patent attorney.
Because of this, if your business is considering filing a provisional patent application for your proprietary technology, you should seek the counsel of a qualified patent attorney.  We can help you prepare the provisional application correctly, and set you up for success in protecting your intellectual property.

Article by Jack Abid

Jack G. Abid is a shareholder and practices in patent prosecution group at Allen, Dyer, Doppelt, & Gilchrist, PA. Jack received a BS in physics from Jacksonville University and a BS in electrical engineering from Georgia Tech (i.e., making him a “helluva engineer”). Jack received his law degree from the University of Florida. His patent prosecution experience includes electrical and electronic equipment, telecommunications equipment and cables, laser and optical devices, semiconductor devices, semiconductor processing, mechanical devices, medical devices and software. While attending the University of Florida, Levin College of Law, Jack served as Editor-in-Chief, Research Editor and Web Editor of the Florida Journal of International Law. He was also a member of the Journal of Technology Law and Policy. He has secured hundreds of patents for his clients over 12 years of experience, and advised clients of all sizes on intellectual property.

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