Professor Dennis Crouch's Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned contains a graph showing provisionals have steadily increased from 1995 to 2012. In FY 2012, we are up to 160,000 filings! In a smaller study he found that 35% of provisionals do not include a single claim. Claims aren't required so this is not surprising, but it is surprising that 15% of the provisionals are a stack of presentation materials (e.g., PowerPoint?) since a provisional must enable the claimed invention. See my articles for an explanation:
The Benefits of Provisional Applications: Slip, Sliding Away
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
Whether or not we love or hate provisionals, we should expect the annual filing rates to rise. The AIA first inventor to file provisions contained in 35 USC 102 and effective on March 16, 2013 retain a one year grace period for inventor (and inventor derived) disclosures, but do not expressly shield a pre-filing offer for sale, a public use, or a publication that cannot be traced back to one of the inventors.
Harold Wegner says the scope of the AIA grace period is an open question. See Wegner, The 2011 Patent Law: "Leahy-Smith maintains the concept of a one year grace period for inventor's pre-filing activities but defines the grace period as limited to the applicant's 'disclosures' of the invention, making it an open question whether a secret commercialization or other 'public use' or 'on sale' events fall under the grace period because they may not constitute 'disclosures' of the invention."
For now it's safer to take a narrow view of the grace period. Thus, a provisional or a nonprovisional satisfying 35 USC 112 must be filed before an offer for sale or public use of the invention. If an examiner assumes a nonprovisional is entitled to the provisional filing date, a sketchy provisional may as well have a flag: "litigators here is a promising date range for prior art to invalidate a patent-- between the provisional and the nonprovisional filing dates" (i.e., when the technology is most developed and time-wise qualified). Many provisionals do not satisfy 35 USC 112 and nonprovisionals depending on them for priority may find the effective filing date is the nonprovisional filing date.
The fact more than half of provisionals are abandoned without the filing of a nonprovisional is consistent with the PTO's stated purpose: to give inventors one year to explore whether the invention has commercial prospects before filing a more expensive nonprovisional. The AIPLA Report of the Economic Survey 2011 says a typical charge for a provisional is $3,500, while the typical charge for a nonprovisional is $7,000 - $12,000. I see the cost savings, but given the price difference note it isn't realistic to expect both are equal to the task of satisfying 35 USC 112.
Copyright © 2012 Robert Moll. All rights reserved.
