INTRODUCTION

Many believe that a provisional patent application (see:http://www.uspto.gov/web/offices/pac/provapp.htm) is a way to secure a filing date for a patent without investing in the expensive drafting and filing of a regular application (see:  http://www.uspto.gov/web/offices/pac/utility/utility.htm). While a provisional application may have that effect, using that tactic is not without risk.

WHAT IS A PROVISIONAL PATENT APPLICATION?

A "provisional" patent application comes from Title 35 USC Section 111(b)

 (see:http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf).  That statue states:

(1) Authorization. A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include--

     (A) a specification as prescribed by the first paragraph of section 112 of this title; and

     (B) a drawing as prescribed by section 113 of this title.

(2) Claim. A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.

Note that the provisional application does not require a claim (which is, in fact, what defines the invention).  This gives the sophisticated applicant opportunities and creates some traps for the unwary.  This paper will focus more on the traps than it will on how to take advantage of the statute.  For more on that topic click patent application procedures patent application procedures.  For a starter form to record an invention in preparation of drafting a patent application, click Invention Record Form.

RISKS OF PROVISIONAL PATENT APPLICATIONS

Risk to US Patents

The statute would seem to allow a patent applicant to obtain a filing date by filing a provisional application that would apply to later-filed claims applications.  And that might be the result.  Many file without paying for a patent attorney or agent to draft the provisional application, and they file with no claims.  They then believe they are "safe" or "?protected" for a year (because the statute gives them that long to file a regular application with claims or convert the provisional into a "regular" application under Section 111(a).  However, by saving money and waiting, they have taken a risk that there will be no patent, or the patent they receive may be very narrow.

Any claim in the later-filed application has to be "supported" by the provisional application.  That means it must be "enabled" by the provisional application, the "best mode" needs to be disclosed in the provisional application, and the later-filed claim must claim an invention what was "described" in the earlier application in a way that allows a person of ordinary skill in the art to determine that the inventor, when the provisional application was filed, "was in possession" of that later-claimed invention.  If the provisional application cannot do that, then the later-filed claim does not have the support of the filing date of the provisional.  By that time, it may be too late to supply additional support to save the claim.

If a patent attorney does not draft the provisional application as if it were going to be a regular application, how much chance is there that the provisional application will later support a claim in a later-filed-and-drafted application? 

Suffice it to say that there is at least some risk.

If a regular application is drafted and filed quickly after the filing date of the provisional (you might even call that application a provisional and delay the extra filing fees associated with the claims), this risk may not be too great.  However, as time passes, an on-sale bar date or a publication date may ripen between the date of filing of the provisional and the date of filing of the "regular" application.  The consequence of that occurring could destroy the validity of the later-filed claim.

In summary, the provisional application can be a very useful tool, but many do not use it well and therefore do harm to themselves.  The bottom line is that it is best to have a fully-drafted application on file as soon as possible, but it is better to get something on file than nothing at all.  When that something is a provisional, be sure to monitor the situation so that it continues to be a tool.

Risk of a Provisional Application to Foreign Patents

Many people file the provisional application immediately before a publication of the invention--to preserve their ability to claim the invention in a foreign patent under the Paris Convention (see: www.wipo.int/treaties/en/ip/paris/index.html).  That Treaty, under Article 4A, states:

(1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

(3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.

This portion of the treaty allows a foreign application to claim the benefit of the filing date of a patent application in the United States, but only if the foreign application is filed within a year (which is the "period hereinafter fixed") of the filing of the United States application.  Since most foreign countries do not allow a patent on an invention that has been made publicly available before the filing date of the patent, this is critical. 

Most U.S. applicants will make a public disclosure of the invention after they file their application.  Therefore, if the foreign application is not allowed to claim the filing date of the United States application as its own filing date, the foreign application may be dead on arrival. 

A potential problem with the U.S. provisional patent application is that it might not be considered by all non-U.S. courts to be an "application for a patent" or a "regular national filing" as those terms are used in the Paris Convention. 

The European Patent Office ("EPO," see:http://www.european-patent-office.org/index.en.php) made this claim at one point in the mid-90's.  A great hue and cry was raised by the United States, and the European Patent Office retraced its position.  See, Miller, Todd R., United States Provisional Patent Applications and Paris Convention Priority Rights, 37 IDEA 161 (Franklin Pierce, 1995) (www.idea.piercelaw.edu/articles/37/37_1/4.Miller.pdf).  Also, the United States amended its statute so that the provisional application "may be treated as" a regular application (before, a later-filed application would claim the priority date of the provisional application).  This may seem like a hyper-technical point; however, the theory was that the EPO may have been correct in stating that the provisional application, as the statute was originally drafted, could not become a patent.  Therefore, any later-filed application could not rely on the priority date of the provisional application. 

One theory under the current United States statute is that, because the provisional application may be converted into a United States patent application, it does meet the definitions of "application for a patent" and "regular national filing" under the Paris Convention.  Therefore, according to this theory, there is no risk in relying on the provisional application, when it is converted into a regular application. 

This theory is supported by the exchange of correspondence between Commissioner Lehman of the USPTO and Director General Bogsch of WIPO found at: www.USPTO.gov/web/offices/com/sol/notices/provisional.html.  Note however that, some day in the future, a foreign court may decide that, when the provisional application was filed, it was not an "application for a patent" or a "regular national filing" because it could not mature into a patent.  It could not become a patent without some further action by the applicant to convert the application.  There is also some question as to whether the provisional must be actually converted into a regular application, which produces a potentially negative effect in the U.S.  Since this issue has not been decided by any foreign court, again, there is at least some risk, and the consequence is: no foreign patent. 

CONCLUSIONS

There are risks in using the U.S. provisional patent application, rather than filing a well drafted application with claims under Section 111(a).

How big is the risk?  No one can truly say, and it may turn out to be very small.  See, e.g.Provisional Priority Practices . . .  by Bob Armitage.  However, one could presume that it might be an argument that would be considered seriously by a foreign "Supreme Court" in deciding whether to invalidate a foreign patent. The risk can be eliminated by filing a United States application as a regular application before the publication of the invention. 

Of course, many times, there is not enough time to do a good drafting job for the U.S. application.  People need to get to market, and the risk with regard to the provisional application may be perceived as low compared to the risk of not getting into market.  There are other reasons, too, for taking those risks to preserve certain benefits in the U.S.  In any case, something is better than nothing; and making no filing is the worst mistake of all.

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