The provisional patent application is a very effective tool, if used correctly.
As part of my research for Provisional Patent Applications: Use and Abuse*, I reviewed hundreds of provisional applications, including more than 100 that were later scrutinized in legal proceedings by the US patent office, US courts, and the Technical Board of Appeals of the European Patent Office (“EPO”).
In reviewing these provisional applications, I learned that all too often, they are submitted without full understanding of how to make the most of this powerful tool. The most common problem is when a provisional application fails to provide the protection the inventors thought they had. In many cases the problem is only detected years after the fact – when it is far too late to correct the damage.
To understand how and why this happens and what can be done about it, we must analyze the inventor's situation when they files a provisional and one year later, when filing the patent application.
The provisional patent application (provisional) allows applicants to establish an early priority date for a later filed patent application. If the patent office allows claims to issue, and if the specific claims that have been allowed are described in the provisional, then those allowed claims will have the priority date of the provisional filing date. Otherwise, they will have the priority date of the later filed patent application, which is typically twelve months later.
In other words, for the provisional application to provide the protection the inventor is seeking it must include a description of the claims that will be filed one year later. In many cases this is not possible – for a number of reasons:
Many inventors file the provisional at the early stages of development -- before they have a clear definition of the product or process being developed. They do so because they are not sure they can keep the development a secret, or they want to share the information to explore business opportunities.
Inventors sometimes need to file a provisional in an "emergency mode" within a matter of days. For example, if an unexpected and immediate investment opportunity arises, which will likely require a discussion of the product being developed.
In both scenarios, the inventor faces a dilemma. Key elements of the invention must be shared with other parties and cannot be kept a trade secret. Prior to sharing the information, the invention must be protected. However, the protection secured may only be partial since the development is at an early stage -- one cannot protect what has yet to be developed.
Most inventors and businesspeople will opt to take advantage of a commercial opportunity while taking the risk of less than-optimal protection. The alternatives -- doing business without protection or forgoing the business opportunity altogether – are obviously less attractive.
In these situations, filing a provisional patent application is most useful strategy. Preparing and filing a provisional is considerably faster, simpler, and less expensive than filing a regular patent application. It enables continues product development up to the last minute, with the goal of obtaining the best protection possible under the circumstances.
In one year’s time, the inventor will prepare the patent application that seeks priority from the earlier filed provisional. During this 12-month period, the technology has continued to develop and there is increased understanding of the business opportunities. The patent application will most likely include the contents of the provisional as well as a description of innovations and potential products that were identified during the year. In many cases the claims will focus on the later developments.
Claims drafted later are not described in the original provisional, and their priority date will not be based on the provisional filing date. Inventors who continued sharing their developments with others throughout the year, including innovations that were developed after the filing of the provisional, will be at best, only partially protected.
The strategy that minimizes this problem is to file additional provisional applications over the 12-month period. If development is ongoing, technological improvements and new product features should be protected as soon as they are identified. The later filed patent application should include the contents of the multiple filed provisional applications. x
The pitfall of failing to capture the inventive concepts in the provisional, which is how the problem is often described, is minimized by reducing the lag between the development time and the time of the protection
The solution explained graphically:
Assume an inventor's first prototype, referred to as A, was protected with a provisional patent application, soon after the development started. Over the course of the year, the inventor developed 3 more versions of the product, referred to as B, C & D. Each new prototype improved and expanded its predecessor.
In the first, and unfortunately the most common scenario, a patent would be filed 12 months from the date of the first provisional. Ideas developed in stages, B, C & D would get the priority date of the filed patent.
In the second scenario, referred as Just-In-Time Protection, ideas developed in stages, B, C & D would get the priority date of provisional 2 & 3. Ideas developed in the last phase, D, would get the priority date of the filed patent.
With Just-In-Time Protection the inventive concepts are captured in a provisional as they are conceived.