About US Provisional Applications:
Provisional applications for a patent are not examined, so they cost less to
file. To get actual coverage from a provisional filing, during the one year
after filing, the applicant has to either file a regular utility application
claiming the priority of the provisional case, or convert the provisional
application to a regular one.
A provisional application is occasionally a good patent tactic. Usually it
is not. A US
inventor should consider a provisional filing if both of the following
conditions are met::
1) there is an urgent deadline
for putting the product on the market or publishing a technical description of
it; and
2) foreign patent applications
will probably be filed if the new product is successful.
In these cases, a provisional can "buy time" to test the market,
do a patent search, and generally to see if the
invention is worth patenting. US patent laws have always allowed an inventor a
grace period in which to file a patent application after the product has been
offered for sale or after it has been publicly disclosed, but other countries
generally do not provide a grace period. Part of Congress' reasoning for setting
up the provisional was that it could be used to extend the same grace period to
other countries.
There are several traps for the unwary built into the provisional
application:
- There
is a temptation to file too soon, or to file an overly brief description.
If the application fails to describe the invention in enough detail
that someone "ordinarily skilled in the art" can use the
application's description to practice the invention "without
undue experimentation", it does not offer any protection whatever.
This is the same standard applied to regular applications. Because the law
requires this level of completeness, anyone who is ready to file a
provisional application is also ready to file a regular utility
application.
- The
high costs of foreign filings may have to be faced earlier in the process.
If international coverage is desired, but there are
no immediate deadlines looming, one is almost always better off filing a
regular application and hoping that the Patent Office starts the
examination during the first year. With some luck, one can get the benefit
of an Examiner's search and evaluation before having to file equivalent
foreign applications or an international application.
- The
good arguments for filing provisionally are all predicated on your being
in a rush. So, how do you minimize the risk of failing to provide an
adequate disclosure of the invention? One approach is to figure that a
provisional is going to be less well organized than the regular
application that follows it. This means that the provisional should be
bigger – NOT smaller. It will have more drawing figures. Not fewer. Good
organization lets one cut down the size of a document. Haste requires
either discarding material (a potentially fatal choice), or putting in
everything that’s on hand.
David
A. Kiewit
Registered Patent Agent
5901 Third St. South
St. Petersburg FL 33705-5305
+1 (727) 656-0669 voice
+1 (760) 841-0989 fax
questions to:
dak@patent-faq.com
Copyright 1999- 2009 by David A. Kiewit
All rights reserved