Provisional patent applications have been available in some foreign countries, for example, in the UK, for many years. In an effort to harmonize US practice to the general WIPO practice and standards, a 1995 amendment to the US patent laws was implemented and provisional patent applications became available to US applicants. Since June 8, 1995, inventors have had the option of filing a provisional application under 35 U.S.C. §111(b). The purposes for this amendment to the law were two-fold. First, because the US Patent Office does not examine provisional applications, the filing fees are much lower than those of non-provisional applications ($220; $110 for small entities as of October 2008). In addition, provisional applications were meant to provide parity to US applicants, who under the old provisions were unable to "extend" the patent term beyond 20 years from the application's filing date. That is, in 1995, when the US patent laws were changed so the patent term became 20 years from the filing date, non-US applicants were granted an "extra" year in the US patent term as a result of the priority filing in their home country. To provide US applicants a similar benefit, the 12-month pendency for a provisional application is not counted toward the 20-year term of a patent which is granted on a subsequently filed non-provisional application claiming benefit of the filing date of the provisional application.
The trend shows an acceleration in provisional application filings. Over 130,000 applications have been filed in fiscal year 2007 ending on September 1, 2007, the last full year for which final statistics are available. Through the first five months of fiscal 2009 the pace of provisional application filings has been maintained, with conservative estimates being that about 11,000 provisional applications per month have been filed.
Some significant differences in provisional application requirements are that applications can be filed without claims to obtain a filing date and that the provisional applications are not examined and are not reviewed for substantive matters. The filing date of a provisional application is the date on which a written description of the invention, and drawings if necessary, are received by the USPTO. Since a provisional application expires after pending for a year, the applicant must file a non-provisional application to claim the benefit of the earlier provisional application filing date. If the applicant chooses to not file a US national application, but to file instead a PCT international application, the non-provisional, national phase application need not be filed in the USPTO until 2½ years after the PCT application filing date, which is the same due date as for the non-US filings.
The filing requirements for a provisional application are also not as strict as those for a non-provisional application, and this can mislead lay applicants into thinking that any type of documents or drawings can be filed to hold the date of invention. The general, and wrong, impression is that the provisional patent application filing system allows an applicant to obtain a valid priority filing date quickly and cheaply with minimal or no patent attorney involvement. Applicants have utilized the provisional application as a strategy to delay prosecution and avoid the filing fees and the time and application-preparation charges necessary for filing a non-provisional application.
The misunderstanding arises when a provisional application is filed with a bare-bones description that is not prepared in the normal manner, as it would be for a non-provisional application. The tactical advantage obtained in the provisional application filing is in the consideration that it is sufficient for providing protection to the applicant once the non-provisional application is filed. However, unless the disclosure of the provisional application is sufficient to enable the later filing of a non-provisional application, there is some danger that the provisional application priority date will not be granted to the non-provisional application and any intervening prior art may result in an impediment to obtaining a patent. There can be a crucial lapse if the applicant has previously made his invention public by a sale or publication in a research paper, since rights in foreign patents may be given up, and subject matter not disclosed in a provisional application will be treated as new matter in a subsequently filed non-provisional application.
Significantly, the practice of patent applicants who file a simple disclosure to obtain a provisional date—and then wait a year to provide a proper disclosure as part of the regular (non-provisional application) filing—has been found wanting by the courts. In New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002), the Court of Appeals for the Federal Circuit found a patent was not accorded a priority filing date when the provisional application failed to enable the subsequently-filed disclosure.
However, for the non-provisional utility application to be afforded the priority date of the provisional application, the two applications must share at least one common inventor and the written description of the provisional must adequately support the claims of the non-provisional application:
‘An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the [regular non-provisional patent] application... is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application.' 35 U.S.C. § 119(e)(1).
In other words, the specification of the provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,' 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.
The practice by inventors of filing a provisional patent application with drawings and documents that may not fully enable the invention or the claims as ultimately issued, thinking that it will "cover" their invention, yields an unnecessary risk of having to defend patent-invalidity assertions based on insufficiency of the underlying provisional application that an accused infringer may raise. Inventors are advised to approach the filing and preparation of claims and drawings for a provisional application with this risk in mind.
Vol. 53, June 2010