Articles

Understanding The Benefits (And Limitations)
Of Provisional Patent Applications 

Thomas A. Beaton

In last month’s Baker Botts IP Report, we presented an article discussing the role of scientific presentations as prior art printed publications under 35 U.S.C. § 102(b). The article discussed the problems caused by the fact that “scientific researchers and academics are often under a great deal of pressure to publish or present their findings soon after making their discoveries.” After discussing the recent decision of the Federal Circuit in In re Klopfenstein,1 in which early scientific presentations of a discovery served as publications that established a time bar against the patentability of an invention, the article noted that “a researcher, in order to safeguard his patent rights, could file for a patent application as soon as the concept and the details for implementing his invention are clearly within his mental or experimental grasp . . . .” A provisional patent application is a typical vehicle by which researchers and academics can seek to protect their ideas in the period immediately after conception and reduction to practice, but before publication or any other possible bar-creating events. This article presents a brief discussion of provisional patent applications, their benefits in preserving priority of invention, and the limitations or possible pitfalls of relying on provisional patent applications.

Provisional patent applications came into being in the United States as a result of the Uruguay Round Agreements Act of 1994, which went into effect on June 8, 1995.2 The main purposes for providing provisional applications were to harmonize U.S. patent law with patent laws of other jurisdictions so that domestic applicants would be placed on equal footing with foreign applicants with respect to patent term, and to provide an incentive to independent inventors and inventors with limited funding to file for patent protection on their ideas. Provisional patent applications, further, have minimal filing fees, and can allow inventors and companies to defer the decision on whether to invest in a full application, perhaps giving them a chance better to evaluate the potential worth of the invention and the advisability of making such an investment.

Provisional applications are filed under 35 U.S.C. § 111(b), which requires only that a specification as prescribed by the first paragraph of 35 U.S.C. § 112 and any necessary drawings be filed in order to obtain a filing date for the provisional application. A cover sheet and the required statutory fee is due within an extendable period of two months from the filing date of the provisional application. The cover sheet must identify the filed application as a provisional application.3 In addition, the cover sheet shall also identify the inventors, the residence of each inventor, the title of the invention, the name and registration number of the attorney or agent submitting the application, a docket number (if applicable), the correspondent’s address, and any government contract information, if applicable.4 A provisional application remains pending for one calendar year after its filing date, whereupon it becomes abandoned and can no longer be used as the basis for a utility patent filing. Unlike utility patent applications, provisional applications cannot claim a right of priority from another application. Perhaps most noteworthy, a provisional application does not require claims and is not examined.5

During the pendency of a provisional application, an applicant may “convert” the provisional application to a non-provisional application. However, it is generally more advisable to file a separate non-provisional application that claims priority to the provisional application instead of using the “conversion” process, because the term of the provisional application is not included in the twenty year patent term for a patent issuing on a separate application. In either case, the applicant will be entitled to the priority date of the provisional application as long as the non-provisional application is initiated during the one year term of the provisional application.

Any reference in the non-provisional application claiming priority to the provisional application must be filed within four months of filing the non-provisional application or sixteen months of the provisional filing date, whichever is later. At least one common inventor is required between the non-provisional application and the provisional application.

A provisional patent application, like any patent application, requires a specification that satisfies the first paragraph of 35 U.S.C. § 112, which requires that the specification give a written description enabling one of ordinary skill in the art to practice the invention ultimately claimed, and also requires disclosure of the best mode known to the inventor for practicing the invention. This requirement means that care must be taken regarding the contents of a provisional application. It frequently occurs that academics, researchers, and businessmen preparing for a provisional filing, especially one motivated by an impending publication or offer for sale of the technology in question, will have only minimal written materials describing the invention. For instance, simple business proposals or plans, such as PowerPoint presentations, or other very summary descriptions of the invention, such as might be presented on scientific conference posters, handouts, or brief textual descriptions of experimental findings, will often be presented by the inventors upon patent counsel’s request for a description and disclosure of the invention.

There are, of course, occasions when the urgency of an impending disclosure or bar date, or the unavailability of more detailed disclosure, means that it is better to file a provisional application based on even very sparse disclosure than to risk loss of all rights. However, counsel should be aware that submitting only the above-described types of skeletal disclosure in a provisional application filing is generally sub-optimal and will not guarantee the desired full scope of claim coverage and priority, especially in view of increased judicial scrutiny regarding the written description and enablement requirements for patent applications. Stated simply, the courts may deny the benefit of a provisional application priority date as to any portion of the claimed invention that was not adequately and enablingly disclosed in the provisional application. This loss of priority rights can be critical if another inventor can establish a priority right (as to the entire subject matter) during the intervening period between the patentee’s provisional filing date and his subsequent non-provisional application.

The goal of aiming for full, enabling disclosure of inventions within the provisional patent specification may place a burden on applicants, because often all the details of their invention are not yet fully worked out at the time of provisional filing.  Patent counsel and in-house counsel may also choose to spend more time with inventors during the invention disclosure process in making them aware for the need of maximal disclosure and as full a description as possible of the invention at an early stage.

In addition to possible insufficiency of disclosure, there are other potential pitfalls to avoid with respect to provisional applications. For example, a priority claim to a provisional application does not, by itself, incorporate material from the provisional application; rather, the entire disclosure from the provisional application needs to be re-stated in the non-provisional application. There may also be a potential pitfall with respect to the duty of disclosure. Specifically, any intervening prior art that is discovered between the provisional filing date and non-provisional filing date should be disclosed to the Patent Office in case the claims in the non-provisional application are ultimately found unsupported by the original provisional disclosure.

Any Patent Cooperation Treaty (PCT) applications that seek to claim priority from the provisional application must, like the U.S. non-provisional application, also be filed within one year of the provisional application. This requirement can be burdensome on some applicants because of additional costs involved with the corresponding filing of the non-provisional application in the U.S. Finally, assignment documents are not recordable for provisional applications, and thus companies will need to ensure that they secure and file an assignment adequate to establish their ownership of the later-filed non-provisional application.

As discussed above, a claim is not required in a provisional application, and many practitioners may be wary of submitting any claims, fearing that subsequent changes to the claim scope set forth in the provisional application may be alleged to give rise to prosecution history estoppel. While this apprehension may be well-founded, there can be countervailing considerations in favor of submitting at least one claim in the provisional application, most notably the fact that some foreign jurisdictions may not recognize a U.S. provisional application as a priority document if a claim is not included.

Notwithstanding the caveats discussed above, a provisional patent application can represent an important and useful step in the patent application process and can be beneficial in certain instances. First, it allows the applicant to put a stake in the ground for an earlier priority date for his invention at a relatively low cost. This gives applicants time to assess commercial viability of their invention to help them determine whether or not to spend the usually significant amount of money required for a non-provisional patent application. Second, applicants can point to the provisional filing as a tangible step of progress toward a patent when they are seeking out venture capitalists or other investors to help fund their endeavors. Third, some companies may file provisional applications merely to have the legal ability to mark their product as “patent pending” in order to deter competitors or to gain commercial advantage and marketing prestige.

Because of the In re Klopfenstein case and other cases that discuss what does or does not constitute a printed publication, it is probably advisable for inventors to file a provisional application before any public disclosure or offer for sale of the invention or of products embodying it. The challenge that such a policy poses is that in light of the cases scrutinizing the sufficiency of disclosure of a provisional application, it is advisable to include as much detail of the invention in the provisional application as possible to enable one skilled in the art to make and use the invention, as well as provide the best mode of practicing the invention. Ultimately, the applicant cannot disclose any more than he knows at the time of filing, so the sparseness of available disclosure should not be a deterrent to filing a provisional application to preserve at least some priority rights to what is currently known. Rather, the imperative should be to make sure that all available disclosure has, in fact, been put forward and, if feasible, written up in a fashion likely to satisfy Section 112 and avoid written description/enablement flaws, unless taking the time to do so would pose the graver harm of forfeiting priority rights altogether.

1 380 F.3d 1345 (Fed. Cir. 2004).
2 See Pub. L. No. 103-465 §§ 532(b)(1)(C), 534(b)(1).
3 37 C.F.R. § 1.53(c)(1).
4 37 C.F.R. § 1.51(c).
5 In addition, there are no provisional applications for design patents.