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2008-03

The Inventor's Mentor

March 2008

Provisional Application


This is the third column of a series discussing patent law from the point of view of the individual inventor. My intention is that by the 12th month this series of newsletters will provide you with a valuable guide. This month I will explain the advantages and pitfalls of filing a provisional patent.

 

Filing a provisional application offers inventors a low cost option of securing a filing date for protecting their invention should someone else with the same idea file a patent. Provisional are cheaper. At the present time, the USPTO filing fee is only $105. They do not need a signed declaration or oath; they do not require an information disclosure statement (IDS) which is a list of the relevant prior art known to the inventor. And since the writing of the provisional is simpler, the fees to the patent practitioner are also lower. In addition as soon as the provisional is filed, the inventor can label his invention with “patent pending” as a warning to would be infringers.

 

Provisional applications however are NOT patents. They are NOT examined by the USPTO. They are simply put in storage for one year at the end of which they are discarded. To be of real utility and provide the benefit of their early filing date, they must be followed within a year of filing by a non-provisional application that refers to the provisional. The life of the non-provisional will then extend 20 years from its own filing. Thus, filing a provisional followed by a non-provisional can extend patent protection to nearly 21 years. Another benefit from filing a provisional first is that any amendment to the invention can be rolled into the non-provisional when it is filed at a later date. These amendments, of course will not benefit from the protection of the early filing date. More than one provisional can be rolled into a non-provisional provided that they are all filed within a year.

 

A provisional application is only useful if or when someone else files the same invention after the provisional filing date. It becomes then a documented proof that the inventor was the first to file. It is therefore critical to remember that a poorly written provisional is an absolute waste of time and money. On the other hand, a well written provisional can easily be refiled as a non-provisional with hardly any modification. Thus money spent on a well written provisional can be recouped when the non-provisional is filed. Be careful of patent practitioners who file your patent at a greatly reduced price. They will just take a copy of your submission to them and send it to the patent office without any change to it. Yes, the provisional is cheaper, because the patent practitioner does not need to spend as much time and because the USPTO fee is lower. This does not mean that not much time is required to do a proper job. There is a big difference. The specification and drawings need to be complete, broad in terms of what is described and specific to make sure the application is meeting all patentability requirements. Filing at least one claim is recommended to clearly define the invention. Cutting corners on the provisional makes it useless.

 

Provisional are great for small independent inventor with limited means and incompletely defined ideas, who need patent protection while they test the profitability of their invention during the initial manufacturing and marketing phase. However, provisionals add at most one year to the prosecution of the patent. Given that the USPTO currently has a huge backlog (about 5 years for software inventions,) filing a provisional also postpones the time when the patent is awarded and royalties can be collected. In addition, provisional are not convincing to investors who may need to know for sure whether the patent will be awarded. Filing a provisional followed by a non-provisional reduces the upfront cost but is more expensive in the long run. If the inventor has a clear and well defined idea of his invention, and he is convinced of the marketability of his idea then he may decide to apply directly for a non-provisional patent.

 

Next month we’ll discuss another topic. Stay tuned.

 

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com. If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com. This newsletter should not be construed as legal advice. ©2010 by George Levy.

 

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