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    • Point of View
    Quarterly Newsletter

    The Provisional Patent Application
    A Valuable Business Development Tool

    By Deborah A. Basile, Esq.

    What is a Provisional Patent Application?

    A provisional patent application ("PPA") is a document filed with the United States Patent and Trademark Office ("PTO") pursuant to 35 U.S.C. §111(b) Of the Patent Statute. The PTO began accepting PPAs on June 8, 1995, in order to provide a lower cost first patent filing in the U.S. and to give U.S. applicants parity with foreign applicants under the GATT (General Agreement on Tariffs and Trade) Uruguay Round Agreements who already had a similar right. A PPA, like other regular patent applications, must be filed within one year after the date of first sale, offer for sale, public use, public disclosure, or publication of the invention. Otherwise, all rights in the invention will be lost.

    A PPA has a one-year life span. It never matures into an enforceable patent. It provides, however, the means, for an applicant to establish an early effective filing date for a patent application and allows the applicant the right to advertise aproduct or process with the term "Patent Pending" during the year the PPA remains in force. It also allows the applicant to delay filing a more expensive utility patent application until the end of the PPA's one year life. An earlier filing date can provideprocedural advantages, especially if competitors file patent applications on similar inventions.

    PPAs may ,only be filed for useful or functional inventions. In order to obtain a filing date, the PPA must include the following:   (1) a complete written description of the invention, complying with the requirements of the first paragraph of 35 U.S.C. § 112; (2) any drawings necessary to understand the invention, complying with 35 U.S.C. §113; (3) the names of all inventors; (4) a filing fee; and, (5) a cover sheet identifying the application as a PPA. The PPA does not require claims, does not require an inventor oath or declaration, and does not require a disclosure of any previously known patents or publications.

    A PPA must have a detailed written, description. of the invention that enables one of ordinary skill in the art to make and use the invention and must adequately disclose the best mode or wayof carrying out the invention to be covered and later claimed in the regular utility patent application, if filed. This is crucial to show the earliest possible filing date to avoid prior art (previous patents and publications) that otherwise would bar patenting.

    Before the end of the PPA's one year life, if patent protection is to be pursued for the invention, a regular utility patent applica­tion and any desired foreign applications must be filed by the applicant, and they must claim priority based on the PPA. Failure to file a utility patent application within one, year of filing the PPA will result in the PPA being, abandoned, and an applicant will lose the invention priority date.

    A PPA cannot be converted to a design patent application. It can only be converted to a utility patent application. In addition, in order to claim the benefit of the earlier PPA filing date, the Utility patent application based on the PPA must have one inventor in common with the inventor(s) named in the PPA, and the claimed subject matter in the utility patent application must have been disclosed in the PPA. Any disclosure that is added to the utility patent application that is not in the PPA will, not be entitled to the earlier PPA filing date.

    What are the differences between Provisional Patent Applications and Nonprovisional Patent Applications?

    Nonprovisional patent applications ("nonprovisionals") include utility patent applications, design patent applications, plant patent applications, and foreign patent, applications. PPAs and nonprovisionals differ in the following ways:

    • PPAs do not mature into actual patents, whereas nonprovisionals, if found to be patentable, can mature into actual patents.

    • PPAs are not examined on their merits by the PTO, whereas nonprovisionals are examined on their merits by the PTO.

    • Non provisionals require formal written claim(s) of the invention, an inventor oath or declaration, and a disclosure of any previously known patents or publications, whereas PPAs require none of these.

    • Nonprovisionals can claim the priority, benefit of previously, filed U.S. or foreign patent applications whereas PPAs cannot.

    • The government filing fees for nonprovisionals are two to three times more expensive than the, filing fees for PPAs.

    • Since a PPA does not require claims, the cost of preparing a PPA is one-third to one-half the fee for preparing and filing utility patent application.

    • PPAs afford no rights against infringers, whereas nonprovisionals can mature into patents that give the patent owner the right to go after infringers as soon as the patent issues.

    • PPAs are good for one year. Utility, patents based on a PPA are granted a term of existence of 20 years from the date of converting the PPA to a utility patent application, and the one year of pendency for the PPA is excluded from the term calculation. This effectively extends the life of the utility patent by up to one year, or up to 21 years from the filing date of the PPA.

    What are the advantages of a Provisional Patent Application?

    The advantages of filing a PPA include the following:

    • Permits one year's authorization to use the notice "Patent Pending" in connection with the invention. This allows_ immediate commercial promotion of the invention with greater security against having the invention stolen. Plus, many companies Will not discuss an invention with you until the invention is at least "Patent Pending." Although nonprovisional patent applications also allow "Patent Pending" status, such applications are more costly to prepare and file.

    • Provides an identifiable piece of intellectual property that gives you or your company credibility with potential investors.

    • Costs less than filing a regular utility patent application.

    • Provides a quick way to establish U.S. patent application filing date for the invention. This is especially useful if there is going to be an imminent publication or sale of the invention, such as at a trade show.

    • Provides, one full year to test the invention, to evaluate and investigate the marketability and manufacture of the invention, and to gain a better idea of whether' a regular utility patent application is worth pursuing.

    • Provides one full year to seek capital, investors, and/or licenses for the invention.

    • Delays the higher cost of filing and examination of a regular utility patent application and allows time to arrange for financing of these costs.

    • Effectively extends the term of a U.S. patent from 20 to 21 years.

    Under what scenarios might you consider filing a provisional patent application?

    • Your start-up company has just developed an invention that it believes will revolutionize the industry, and it wants to shop it around to various companies for possible manufacture, distribution, sale, or licensing. Early in that process. you discover that these companies aren't interested in talking to you unless you have a pending patent application or an issued patent on the invention.

    • Your' company is introducing a new and useful product at a national trade show in less than a week, and because it is afraid someone will knock off the product, it needs to get a patent application on file for the product as quickly as possible before the trade show begins.

    • Your veteran manufacturing company has significantly improved the functionality of device, which it has been making for years as a result of independent innovation. It needs to protect the improvement to obtain a business advantage, before it is disclosed to the customer with the next shipment.

    Each of these scenarios illustrate a legitimate, common business sit­uation in which you need to quickly obtain "Patent Pending" status for an invention. A provisional patent application is a useful tool that provides strategic and defensive advantages quicker and less expensively than filing a nonprovisional patent application.

    In conclusion, PPAs enable a company or an inventor to quickly. protect an invention by obtaining "Patent Pending" status for up to one year prior to converting the PPA to a utility patent application at lower cost than filing a nonprovisional patent application. The PPA can thus be used as a strategic business tool to allow a company or inventor to develop an invention and showcase the invention at a trade show or shop the invention around for a year, to defer the higher costs of filing a regular utility application for a year and to provide the inventor with a business advantage.

    If you or your company is interested in obtaining more information on design patents please contact Deborah A. Basile, a patent attorney who specializes in patents, trademarks, and copyrights in the Springfield, Massachusetts office of Doherty, Wallace, Pillsbury & Murphy, P.C.

    For more information about this and other Intellectual Property topics, please call or email Deborah A. Basile, Esq. at 413-733- 3111, dbasile@dwpm.com or Karen Chadwell, Esq. at 413-733­3111, kchadwell@dwpm.com

     

    This material may be considered advertising under the rules of the Supreme Judicial Court of Massachusetts.



    DOHERTY, WALLACE, PILLSBURY & MURPHY
    ONE MONARCH PLACE, SUITE 1900
    1414 MAIN STREET
    SPRINGFIELD, MA 01144-1900
    TELEPHONE • 413-733-3111
    FAX • 413-734-3910

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