The Case Against Provisional Patent Applications
Written by Ben Esplin
INTRODUCTION
Since I am an attorney, I will start this post with a small disclaimer: I think U.S. Provisional Patent Applications have some value for biotech and pharmacology innovations. But, since at Esplin & Associates we do not represent clients in scientific fields where this exception applies, I will not address it further.
The filing of a Provisional Patent Application by a technology startup can hamper the intellectual property rights of the startup because founders often do not understand the nature of the rights represented by the Provisional Patent Application. This post sets forth some of the basic mechanics of a Provisional Patent Application, and discusses the policy behind the granting of patents generally and the value of a patent attorney in applying for a patent. Finally, an explanation is provided as to why, in view of these factors, a Provisional Patent Application may ultimately cause intellectual property rights to be compromised, rather than protected.
THE MECHANICS OF A PROVISIONAL PATENT APPLICATION
A Provisional Patent Application can be filed at the U.S. Patent and Trademark Office (“USPTO”) for a filing fee of $120 (Small Entity), and for that cost the USPTO will (1) store a copy of whatever document or documents are filed, (2) assign a Provisional Application serial number identifying the Provisional Patent Application, and (3) attribute a filing date to the filed document(s). For twelve months following that filing date, the Applicant can file a Utility Patent Application, or even an international PCT Application, that “claims priority” back to the Provisional Patent Application. As a result, it is common for founders to cobble together a DIY document explaining one or more solutions being implemented by a company, which they file as a Provisional Patent Application, or pay a patent attorney a greatly reduced fee (with respect to preparation of a Utility Patent Application) to hastily produce a Provisional Patent Application that has little of the thought or execution one would expect in a Utility Patent Application (due to the reduced budget). This Provisional Patent Application is filed at the USPTO, where it sits for almost 12 months until the applicant pays a patent attorney to prepare a complete Utility Patent Application to file that claims priority back to the Provisional Patent Application.
WHY ARE PATENTS GRANTED
The reason the U.S., and other industrialized countries, grant patents is to encourage the disclosure to the public of new and useful ideas. At its most basic level, a patent represents an exchange between society and the applicant of a new and useful idea for a time-limited monopoly over the idea. Since this time-limited monopoly is valuable, society requires the applicant to explain their idea completely, so that others will be able to understand it. This enables others to innovate “around” the patented invention by finding adjacent solutions not anticipated by the patent holder, and to prepare to extend the innovation once the time-limited monopoly has expired. It is critical to understand that the requirements imposed on a patent applicant to disclose their idea completely to receive the broadest and most comprehensive protection possible are the same whether the initial filing is a Provisional Patent Application or a Utility Patent Application. Concepts found in the Utility Patent Application that are not in the Provisional Patent Application (or that are not discussed as deeply in the Provisional Patent Application) will not receive the benefit of the filing date of the Provisional Patent Application.
THE ROLE OF PATENT ATTORNEY
In preparing a Utility Patent Application, a patent attorney spends, quite literally, hours coming to a comprehensive understanding of the innovation, and then painstakingly selecting the words that will clearly communicate the kernel of invention that lies at its heart. This often includes finding both more general language to describe the innovation than used by the inventor, and the extension of the innovation to other contexts and/or use-cases. the reason for this exercise is, as can will be surmised from the foregoing, the patent attorney will try to capture for her client the greatest possible scope of protection. The patent attorney will look to broaden her client’s prospective rights by expanding the explanation in the Utility Patent Application to meet the statutory requirements for obtaining the time-limited monopoly provided by a Utility Patent. Herein lies the fundamental art of patent application drafting, and it is a skill that remains in high demand.
THE POTENTIAL DANGER OF A PROVISIONAL PATENT APPLICATION
Switching back to our example of a DIY or “cost-sensitive” Provisional Patent Application, it is almost certain the scope of potential patent protection afforded our fictional founders by the Utility Patent Application is significantly “different” than the Provisional Patent Application to which it claims priority. This is because the level of thought and disclosure in the Utility Patent Application should provide a greater scope of potential protection. Typically, these founders have no idea the scope of potential protection afforded by their Provisional Patent Application is be different in any way from the Utility Patent Application. As a result, during the period of time between the filings, they may be susceptible to losing some of the greater scope of rights provided by the Utility Application Filing. For example, if the invention is made public before the Utility Patent Application is filed, patent rights outside of the U.S. may be restricted to the scope that would be proper for the description of the invention in the Provisional Patent Application. There are other instances in which this difference may impact potential rights, based on how the invention is protected (or not) between the filings.
CONCLUSION
Working with a patent attorney to apply for patent rights is almost required, in order to obtain patent rights worth having. The same is true, in large part, in the preparation and filing of Provisional Patent Applications. While founders are occasionally encouraged to prepare and file their own Provisional Patent Applications, or to find a patent attorney who will get a Provisional Patent Application filed “cheap and dirty,” these tactics are rarely effective, and can even be counterproductive for the reasons described above. If you have questions about how to obtain patent rights for your invention, please feel free to contact us for a free consultation.