Friday, November 25, 2011

The Benefits of Provisional Applications: Slip, Sliding Away

Inventors on a tight budget sometimes file a provisional application in the U.S. Patent and Trademark Office (PTO) instead of a regular U.S. patent application to save money and put off the task of claim drafting. Because the United States' first-to-file system will apply to an application that cannot claim a filing date on or before March 16, 2013 (18 months after enactment of the America to Invents Act enactment), I expect an increase in requests to file a provisional by that date by those seeking to keep their patent rights at the lowest cost. Before you move in that direction let's explore the advantages and disadvantages of provisionals.

First, a provisional application must include a specification meeting all the requirements of a U.S. patent application, except a provisional does not require any claims or a declaration. The PTO will not examine a provisional and will abandon it 12 months from its filing date rather than permit it to issue as a patent. A provisional can provide a filing date for the subject matter disclosed, creates no prosecution history, and has a smaller government filing fee. Before 12 months expire an applicant can, among other things (1) file a nonprovisional application, which is a regular U.S. patent application and claim the benefit of the provisional filing date, or (2) convert the provisional application to a nonprovisional application. The benefit of option (1) is the 20-year patent term runs from the filing date of nonprovisional application rather than the provisional application. Thus, it gives applicants a way to establish a filing date at less expense (e.g., no attorney fees for drafting claims), plus a "one year head start" without concerns that the application will be examined. The benefit of option (2) is discussed below.

There are some traps built into provisional applications. First, the specification of a provisional application must support each claim that is subsequently submitted with the nonprovisional application to maintain the provisional filing date. Without claim drafting, there is a tendency to be over-inclusive in the specification, and figure out later what will be claimed. The problem is the unprotected subject matter is dedicated to the public. Worse, the provisional specification may not support the claims and this fact may not be discovered until the nonprovisional application is being prepared and invalidating commercialization has occurred. See New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co. (Fed. Cir. 2002). Claim drafting helps the applicants and attorneys check that the specification supports the claims.

Another problem is that foreign patent offices may not recognize a U.S. provisional application as a proper basis for claiming foreign priority, because no patent issues directly from a provisional application and thus the provisional application may not qualify as "an application for patent" as required by the Paris Convention.

To address this later problem, as well as others, Congress passed the American Inventors Protection Act, effective November 29, 1999, to permit conversion of a provisional to a nonprovisional application. Although foreign patent offices may not recognize a U.S. provisional application as a basis for foreign priority, they should according to this Act grant priority to a converted provisional, that is, a nonprovisional application. At least that is the view we would like the other foreign patent offices to take.

So why not convert all provisional applications to nonprovisional applications within 12 months rather than file a U.S. patent application and claim priority to the provisional? The big reason is converting entails the 20-year patent term run from the filing date of the provisional application rather than the nonprovisional application so "the extra year" disappears, which might be the reason for filing the provisional application in the first place. It also appears to rarely be done. Several Bay Area patent attorneys indicated that they had not converted even one provisional and a seasoned PTO employee admitted he could recall at most a few cases of conversion.

Also the PTO web site and at least one intellectual property author claim a provisional application supports marking "patent pending" on products containing the invention. However, a provisional may not qualify as "an application for patent" as stated earlier. And legal authorities, such as 35 USC, the US Patent Law, the PTO rules (Title 37 of the Code of Federal Regulations), and Federal Circuit case law, don't appear to yet discuss this practice. Given it is a "grey area" and persons suffering a competitive injury can still sue under the America Invents Act for false marking, applicants may want to await legal authority supporting this practice or not mark until after a non-provisional application is filed. At minimum, the risk-taking applicant should file a U.S. patent application, also referred to as a nonprovisional within a year of the provisional filing date, claim the benefit of the provisional, and verify the product contains what is described in the provisional and non-provisional application.

The PTO implemented a pilot program effectively extending the time for filing the missing parts of a nonprovisional from 12 to 24 months in December 2010. "One of the things I kept hearing at the many roundtables we’ve held with inventors all across the country was that additional time flexibility during the provisional period would greatly benefit them," said Director of the USPTO David Kappos. "The existing 12-month provisional period may provide too little time for inventors to test the marketplace. Giving applicants a 12-month period to reply to a missing parts notice would effectively give applicants more time to evaluate the value and market potential of their inventions. It not only helps applicants decide whether to incur the additional costs involved in pursuing a patent, but also, makes the patent office more efficient in enabling the delivery of new products and services to market."

It should be noted that 35 USC 111 states a failure to file a nonprovisional within 12 months of the provisional's filing date results in abandonment. The pilot program does not alter this legal requirement, but provides applicants more time to provide the missing parts of a nonprovisional application. Under the pilot, applicants are permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application needs to be in condition for publication and applicant cannot file a nonpublication request. Applicants would be given a 12-month period to decide whether to pay the required surcharge and additional fees.

Finally, an applicant must do any foreign filing (e.g., directly or via the PCT) and file (or convert to) a U.S. patent application within one year of the filing date of the provisional application to claim the benefit of the provisional application's filing date.

Copyright © 2011 Robert Moll. All rights reserved.