Maryland Bar Bulletin
Publications : Bar Bulletin : March 2008

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Provisional patent applications have been a tool of the inventor community for a lower-cost way to “patent pending” than hiring patent attorneys. A provisional patent application allows applicants a way to file an application with the USPTO without need for meeting certain minor formalities and for a lower filing fee.

The primary purpose of the provisional patent application is to allow a subsequent regular patent application to “claim the benefit of” the earlier filing date. This means that a regular application may be treated as if it were filed on the same date as the provisional. The applicant has 12 months from the filing date of the provisional to file a subsequent regular utility application or convert the provisional to a utility.

The benefits of the provisional are clear. The inventor may beat a competitor for protection of his idea by establishing an earlier filing date. Early filing dates also help applicants preventing loss of patent rights through loss of novelty if someone published, filed at the USPTO or sold the same invention prior to the filing of a regular US application. The inventor will effectively get an additional year of patent term because the 20-year patent term is measured from the date of first filing of a regular utility application. This benefit does not apply to provisional applications that are converted; a separate filing is required. The inventor can start using “patent pending” when subsequently selling product. Filing fees are less expensive. Provisional patent applications are not required to recite a claim nor do they have to be identical to the utility filing.

With all the benefits of filing a provisional, what could be the concerns? Often, inventors take it upon themselves to hastily draft provisional patent applications because they find attorneys’ fees too significant. However, the danger in this approach is in the fact that the USPTO has formal requirements. The provisional must adequately support the subsequent application under the legal requirements of describing sufficiently what is later claimed to teach the public how to make and use the invention and to show that the inventor was in possession of the invention. If the formal requirements are not met, the regular application may not be entitled to receive the benefit of the earlier filing date. This opens up the risk of other inventors having filed applications or public disclosures by others that would preclude the issuing of a patent.

Consulting a patent attorney to draft a proper provisional application will avoid the inherent risks of a hasty or inadequate disclosure. Although the near term cost savings appear significant, the filing of a provisional application without first consulting a patent professional means that the filing fees and money spent on the filing are effectively wasted. However, there are times when foreign or domestic patent rights can be lost unless a provisional is filed quickly. This situation arises when an inventor is about to make a public disclosure. Because any public disclosure can preclude foreign patent rights, it is critical to file a provisional, although perhaps even hastily drafted.

Provisional patent applications are a great tool to get to patent pending before the PTO and, given the incidental benefit of an effective additional year of term, they should definitely be considered as part of an idea-protection strategy.

Konstantina M. Katcheves is a registered patent attorney and Patent Team co-leader for Saul Ewing LLP. Her principal areas of practice are patent prosecution, counseling and opinions, primarily in biotechnology-related areas.

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Publications : Bar Bulletin: March 2008

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