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) 866-0669 (voice/fax)
questions to:
dak@patent-faq.com
Copyright 1999- 2007 by David A. Kiewit
All rights reserved