Provisional Patent Applications — Don’t Try This At Home

Since their introduction a decade ago, provisional applications have become a frequently used mechanism for filing patent applications in the United States. Today, some one-third of all new applications filed in the U.S. Patent and Trademark Office (USPTO) are initially filed as provisionals. Unlike regular utility patent applications, provisional applications are often touted as a relatively simple and inexpensive way to obtain a priority date for an invention, while providing one year in which to prepare and file a regular utility application. The priority date of a patent application is often of critical importance. All major industrialized countries require that an application be filed prior to any public disclosure of the invention, a requirement referred to as "absolute novelty." The United States provides a one-year grace period in which to file an application after a public disclosure, etc. Thus, particularly where a disclosure such as a public demonstration (as in a trade show) or publication is imminent, it may be necessary to file an application to preserve patent rights. Under either the absolute novelty or one-year grace regimes, patent applications are frequently filed with a certain haste, to avoid patentability being barred by a prior art disclosure. Thus, the perception that a provisional patent application can be filed quickly, informally and inexpensively has clear appeal.

To be sure, provisional applications can provide important benefits, not the least of which are filing fees less than a quarter that of a regular application and far less rigid procedural requirements. For example, provisional applications can be filed without claims and without declarations from the inventors. Provisional applications are not examined.

However, provisional applications are not the simple panacea for obtaining an effective filing date to satisfy the requirements of novelty over the prior art as sometimes touted. The common perception that provisional applications represent a low-risk, quick and easy way to obtaining a priority date with minimum effort is misplaced. In fact, the false sense of security with which inventors proceed to publicly disclose their inventions after making provisional filing may ultimately render the invention unpatentable.

Significant revisions to the U.S. patent laws were implemented in 1995 as a result of the General Agreement on Tariffs and Trade (GATT). Perhaps the most significant of these was the change that set the U.S. patent term to expire 20 years from the date of filing of the U.S. application (previously, the term for U.S. patents extended for 17 years from the date of issuance). With the GATT changes, inventors from other countries who file priority applications in their country of origin and file the corresponding U.S. application under the Paris Convention within one year obtain an expiration date that is effectively 21 years from first (i.e., priority) filing. Provisional applications were introduced in order to provide U.S. citizens with this same additional year of protection. While a provisional application can obtain a filing date for purposes of avoiding prior art, the 20-year patent term does not begin until the filing of a utility application claiming priority from the provisional application. Almost since their inception, provisional applications have come to be viewed as a simplified and inexpensive way to obtain a priority date without having to draft claims or obtain executed declarations by the inventors, recognizing that after a year, one would have to file a "real" (non-provisional) patent application.

What is not always apparently appreciated and recognized is that the disclosure requirements for a provisional application are the same as those required for regular utility application. Under 35 USC §112, for the claims of a patent application to be patentable, the application must enable one skilled in the art to practice the invention as claimed, fully describe the "best mode" of practicing the claimed invention as contemplated by the inventor at the time of filing and provide a sufficient written description to establish that the inventor was in possession of the invention as claimed. If these requirements are not met, the claims in the regular application (when filed) may not be accorded the priority date of the provisional application filing. Unfortunately, even some skilled practitioners have come to appreciate this potential defect in provisional filings the hard way.

The case of New Railhead Mfg. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002) clearly established that a provisional application must comply with all the provisions of §112 for priority purposes. New Railhead filed a provisional application within one year after its first commercial sales of a drill bit which was angled with respect to the housing. The later utility application, which claimed priority back to the provisional application, clearly recited the angled structure of the drill bit. However, the provisional application, whose priority date was required to avoid the statutory bar presented by the first commercial sale, did not describe an angled bit. When New Railhead sued Vermeer for patent infringement, Vermeer asserted that the patent was invalid because the claims were not entitled to the date of the provisional application and thus were unpatentable under §102(b) because of the on-sale bar. In New Railhead, the Federal Circuit unambiguously held that to comply with §112, ¶1, a provisional application "must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise and exact terms’ to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application." Id. at 1294 (statutory citation omitted). The patent was held invalid.

The same test applies to provisional applications as applies when determining whether claims are entitled to the priority date of a previous utility application, such as the "parent" application of a continuation-in-part: Does the specification satisfy the enablement, written description and best-mode requirements for the claims? If the answer is no, the claims will not receive the benefit of the earlier filed application. Where the first filed (i.e., provisional) application does not provide adequate support, the claims will only be accorded the benefit of the later filed, fully supportive application. As in the New Railhead case, this later date may not be early enough to avoid a bar to patentability based on prior publication, sale or public use.

Another potential pitfall of a provisional application arises when the provisional application is invoked to establish a priority date for a counterpart foreign filed patent application. Some countries, such as Australia, have a strict "fair basis" disclosure requirement, requiring essentially virtual linguistic identity between wording in a claim and corresponding wording in the specification in order to establish priority; i.e., a requirement far stricter even than the "written description" requirement of §112.

So what are the advantages of provisional applications? Certainly, there are potential benefits, but, as with people, the same characteristics can be strengths or weaknesses, depending on the context. First, a provisional application carries a filing fee which can be as low as $80 for a small entity. However, the filing fee oftentimes pales in comparison to the cost of preparing an application. A hastily pieced together provisional application that is sufficient to obtain a priority date can still be so rough or rudimentary that revising it to file as a regular application may ultimately be more costly than doing a polished job in the first place.

Second, while a provisional application may be filed without claims, or at least with the wording of prospective claims in the specification, doing so may be risky. As aptly demonstrated in New Railhead, it is the claims against which the sufficiency of the specification is judged. If the application is prepared without at least having the claims clearly in mind, the chances of the specification being inadequate are dramatically increased. Thus the perceived advantage of filing without the necessity of writing claims may be illusionary at best, fatal at worst.

Finally, provisional applications are not examined by the USPTO. Only after the regular utility application is filed does it go to an examiner who will then search for prior art. Provisional applications do not start the running of the 20-year patent term in the United States, but they do trigger the Paris Convention requirement to file applications in other countries within one year. While in some situations an applicant may prefer to defer examination, the delay may deprive the applicant of information regarding the prior art that she would get from an office action received before the foreign filing deadline. Granted, in many areas of technology, the USPTO is not currently issuing a first office action within 12 months. However, the mandate of the office’s plan for the 21st century envisions swifter examination.

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