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Why provisional patent applications should not be filed

What is a provisional patent application?

A provisional patent application is a patent application, which is not examined, but rather allows a patent applicant the ability to file a regular utility patent application within one year, and claim priority to the provisional filing date. If prepared correctly (big IF), the provisional patent application allows a patent applicant to have a retroactive filing date for the regular utility patent application of possibly up to one year.

Is there such a thing as a provisional patent?

No. A provisional patent application always expires, and is never examined. Prior to expiration within 12 months, a patent applicant may file a regular utility patent application to attempt to preserve the provisional priority filing date, but the provisional patent application would still expire. If no regular utility patent application is filed within 12 months from the filing of a provisional patent application, the provisional patent application will expire without preservation of the corresponding filing date. In essence, a provisional patent application is a placeholder.

What is required for a provisional patent application?

That is actually a tricky question that needs to be broken into two questions.

The first question is what is required to file a provisional patent application. In order to get a filing date, a provisional patent application only has to have a written description and a drawing; that is in contrast with a regular utility patent application that additionally requires a claims section and an inventor oath to suffice for a filing date.

The second question is what is required to preserve the filing date of the provisional patent application for an effective priority claim by a regular utility patent application. That really depends on how similar the regular utility patent application is to the provisional patent application.

In particular, 35 U.S.C. 119(e) states that “[a]n application for patent … for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application … shall have the same effect … as though filed on the date of the provisional … .” The reference to section 112(a) essentially requires that the provisional provide sufficient written description to allow one of ordinary skill in the art to build the invention, and discern that the inventor actually possessed the invention at the time of the provisional.

What is the most common misconception regarding a provisional patent application?

That the gaps can be filled in with the regular utility patent application, and still preserve the priority date. It is quite common for inventors to have the impression that they can file a relatively inexpensive provisional application with minimal detail, and then expend more resources within 12 months to fill in the extra detail in a regular utility patent application.

From a filing perspective, the USPTO filing personnel will not prevent the foregoing process from happening. An inventor can literally file a 1 page provisional with 1 drawing, and then file a 20 page utility patent application with 10 drawings. The USPTO filing personnel will issue a filing receipt for the provisional application with the earlier filing date, and a filing receipt for the regular patent application with the later filing date and a priority claim to the provisional.

But when the patent application makes its way to a Patent Examiner things tend to get more complicated. A Patent Examiner may scrutinize the regular patent application to determine if the provisional adequately described what was in the regular patent application in enough detail to justify the priority claim. And the USPTO is quite clear on this point: “…, if the PPA [provisional patent application] does not adequately describe all that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the PPA filing date.”

In other words, the filing date that the inventor thought he or she got by filing the provisional basically was never there to begin with; that is even though the USPTO initially issued paperwork stating the priority claim. In essence, that priority claim may be lost if the provisional is not similar enough to a regular patent application.

Is losing a provisional filing date a problem?

It could be, and really defeats the purpose of filing the provisional patent application. As an example, a prior art publication disclosing the inventor’s idea may be published within the 12 month period between the filing of the provisional and the regular utility patent application. If the provisional does not adequately support the utility patent application, the provisional priority date may be not be relied upon. That leaves the applicant with a utility patent application that has to have a filing date on which it was actually filed, not the retroactive filing date of the provisional. As a result, a rejection of the patent application may be issued because the publication of the prior art reference occurred before the filing date of the utility patent application, whereas the rejection may not have been issued if the provisional filing date could have been relied upon.

In essence, a provisional patent application often gives an inventor a false sense of security.

Why does the USPTO even have provisional applications?

The USPTO states that “[a] PPA essentially provides a one-year extension as to the filing of a U.S. non-provisional patent application” and “[i]n doing so, a PPA provides an applicant with an additional year to experiment, perfect an invention, find financial backers, determine sales potential, find interested parties for licensing, etc. before filing his/her non-provisional application.”

Interestingly, the USPTO is not saying, as is often perceived, that patent applicants should expend significantly less resources on preparation of a provisional patent application. An adequate provisional just extends the amount of time for the patent process for those inventors who need more time throughout the entire process. For example, the USPTO states that “[b]ecause a PPA is not examined, an applicant can also avoid the costs associated with prosecuting a non-provisional application during this one-year period.”

Provisional patent cost: can at least some costs be reduced by not having to include claims in a provisional application?

The problem is that the claims of a patent application are the centerpiece for what determine patent infringement -- whether someone is copying your idea. By waiting to prepare the claims until the regular utility patent application is filed, there may easily be subject matter that needs to be described in more detail that was not discussed in the provisional application.

For example, a common patent application drafting technique for a regular patent application is to draft the detailed description of the invention, the claims section, and then revisit the detailed description section to add appropriate language to ensure that the claims are fully explained in adequate detail. Often times, subject matter needs to be added to the detailed description after the claims section is written, and that really cannot be preplanned.

Therefore, although not required for filing of a provisional, claims in a provisional are often helpful for preserving the provisional priority date.

An alternative to filing a provisional application: filing a non-provisional utility patent application is the safe approach

Too many things have to go right for a provisional application to work effectively as a priority mechanism for a regular utility patent application. If even one word of a provisional is not present in a regular patent application, that regular patent application may not be able to rely on the provisional priority date during the patent examination process.

Why take that chance? By filing a non-provisional utility patent application at the outset, which would have to be filed within 12 months anyway, there is less exposure for rejections by the USPTO. The filing date is the filing date, and is not some open-ended question that has to be debated with a Patent Examiner over the course of months, or possibly years, in addition to a myriad of other possible rejections.

Ultimately, to get a provisional application right, it is going to be almost the same amount of work as a regular non-provisional patent application, so why not just file a non-provisional. Contact our patent law firm if you need assistance with your non-provisional patent application.

by Samuel K. Simpson
USPTO Registered Patent Attorney, Patent Ingenuity, P.C.

Patent Ingenuity is a patent law firm based in Newport Beach, Silicon Valley, and Los Angeles, which has extensive experience in overcoming obviousness rejections throughout a wide range of patent applications spanning different technologies. A seasoned patent attorney at Patent Ingenuity can be available to provide you with an initial assessment as to the potential obviousness or non-obviousness of your invention.

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