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Misusing provisional patent applications

Provisional applications are often improperly used as low-cost substitutes for utility applications

How did the use of provisional applications go awry? They were never intended to be, and are not, a substitute for a fully-prepared (i.e., utility) patent application. A provisional application is not a poor man’s patent, which it has been called, especially since it is not a patent, can never mature into a patent and confers no enforceable rights. Provisional applications were created with good intentions and yield valuable benefits when used properly, but they have been misused — unintentionally by the unknowledgeable and intentionally by hucksters in search of a buck.

Provisional applications are not low-cost substitutes for utility applications

Provisional applications are often improperly used as low-cost substitutes for utility applications. The problem with this “cost savings” approach is that a down-and-dirty provisional application, often with few drawings, limited written description and few or no claims, creates what some refer to as a false sense of security because the provisional application’s owner assumes the invention is protected. Nothing could be further from the truth. A provisional application only serves its purpose if it includes sufficient detail to fully (a) protect the invention against disclosure to others, and (b) support any U.S. utility application and/or foreign application claiming priority to the provisional application. A sketchy provisional application does neither.

With this false sense of security, the inventor may talk openly about the invention and even show the provisional application to others. What the inventor fails to realize is that anything not described in the provisional application is fair game for others to copy; disclosing information not described in the provisional application can lead to the loss of patent rights and a sketchy provisional is hardly going to impress potential investors. On the contrary, not only will a sketchy provisional application carry little weight with investors, it reflects poorly on your entire business plan and personal level of sophistication. If your business’s intellectual property is half-heartedly protected with little thought or care, investors may assume other aspects of your business have been treated in the same fashion. 

The true purpose of provisional applications

Provisional applications were introduced in the U.S. on June 8, 1995 with one primary purpose: To preserve at least some ability to obtain patent rights if you have a looming deadline, have no time to prepare a proper utility application and require an informal mechanism to file something quickly, scraping together as much information as time allows. A provisional application is a one-year place holder, providing no rights other than the ability to claim priority to its filing date. If time is not a factor, a provisional application should be prepared with the same care and detail as a standard utility application.

If a provisional application is properly prepared, it can also be used strategically to provide the following benefits:

  1. Phase shifting, which means the term of any resulting patent is measured from the utility application filing date and not the provisional application filing date. In essence, the term of your patent can extend for up to one additional year, or twenty-one years from its provisional filing date.
  2. U.S. prosecution costs are incurred later, or not at all, because the U.S. utility application can be filed up to a year after the filing of the provisional application. During the one-year provisional application period you can determine if the invention is worth the added costs of pursuing a utility application.

Conclusion

Provisional patent applications have a legitimate purpose — to provide a place holder when you have no time to properly prepare a full utility application. More sophisticated practitioners also know how to use provisional application procedures to phase shift and defer prosecution costs. Skimpy provisional applications used to save a buck in the short run are a waste of time and money. Either do it right or do not do it at all.

Contributing Author

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David Rogers

David Rogers is a partner in the law offices of Snell & Wilmer and practices patent, trademark, trade dress and unfair competition law. David regularly...

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