Knowing the Ins and Outs of Filing a Provisional Patent Application I n start-up circles, it’s not uncommon to hear people say that they have a “provisional patent” or that they’re protected from someone stealing their invention because a provisional patent has been filed. neither of these statements can be true, because there is no such thing as a provisional patent. While the people who make those claims are normally well-intentioned, failing to be familiar with the basics of patent law can result in an entrepreneur inadvertently surrendering the patent rights for which he or she has an invention. If this happens, it can cripple a firm that’s planning on achieving a sustainable competitive advantage via its exclusive rights on an invention. Here’s an accurate assessment of what takes place for entrepreneurs working in the United States. What’s filed with the United States Patent and Trademark Office (USPTO) is a “provisional patent application.” It includes specifications (i.e., a description and drawings of an invention), but does not require formal patent claims, inventors’ oaths or declarations, or any information disclosure statement. It’s not assigned to a patent examiner, and no judgment is made regarding prior art or the patentability of the invention. Its purpose, in the eyes of the USPTO, is to establish an early filing date for a subsequently filed full utility patent. What’s meant by this is that if a provisional patent application is filed on December 1, 2014, and the application is done correctly, this becomes the “priority” filing date for that invention. If someone files a utility patent application for an identical invention a month later, that person is out of luck, as long as the inventor who filed the provisional patent application follows through and files for a full utility patent within one year, and both the provisional patent application and the full utility patent application are deemed to be acceptable. A bonus attached to filing a provisional patent application, which costs $149 to file, is that the inventor can legally use the term “patent pending” in relation to the invention. This designation may provide the inventor a significant marketing advantage, if the invention is already for sale, and signal to prospective inventors that the inventor is taking steps to protect his or her patent rights. There is a catch, however, to this scenario—the provisional patent application must be completed and filed correctly. All patent applications, including provisional patent applications, are subject to three important statutory requirements: 1. It must include an adequate written description of the invention. 2. It should enable one of ordinary skill in the art to make and use the invention. 3. It must set forth the best mode of practicing the invention contemplated by the inventor upon filing. If any one of these requirements is not met, along with other statutory requirements the USPTO has, it’s tantamount to not having filed anything at all. So it’s very important that provisional patent applications be sufficiently detailed and filed correctly. Here’s what can happen if they’re not. Suppose Amy invents a new type of tennis racket. She files a provisional patent application on January 1, 2015, by downloading the application and filing it herself. It’s inadequate because it doesn’t contain an adequate written description of her invention, but the USPTO doesn’t tell Amy it’s inadequate because it doesn’t examine provisional patent applications until a full utility patent is filed. On July 1, 2015, Amy hires a patent attorney to file for a full utility patent on her invention. After reviewing her file, the USPTO examiner rejects the application, because someone filed a utility patent application for an identical invention a month earlier, on June 1, 2015. The reason for the rejection is that Amy’s provisional patent application was deemed to be invalid because the description was inadequate. The fact that Amy filed a provisional patent application on January 1, 2015, five full months before the second party filed for an identical invention, holds no weight because Amy’s provisional patent application was deemed to be invalid. Amy’s story illustrates that filing a provisional patent application takes some finesse. Filing a provisional patent application has its place. It’s particularly useful for an inventor who invents a new device and wants to lock in a priority filing date while additional prototyping and feasibility analysis are conducted to decide whether it’s worth the time and money to file for a full utility patent. It’s a balancing act, however. An inventor needs to be far down the road before a provisional patent application makes sense. It may also make sense to hire a patent attorney to file the provisional patent application. Amy’s description probably wasn’t adequate because she didn’t create a prototype of her new tennis racket, and thus was not able to adequately describe it. A patent attorney would have most likely told Amy that her description wasn’t adequate, and suggested that more work be completed before the provisional patent application was filed. An idea can’t be patented—only the specific expression of an idea, which must contain an adequate description. The USPTO does allow additional provisional applications for a device to be filed as improvements are made. This protects inventors who are making progress on their device and want to establish priority dates for improved iterations of an invention as progress is made. Questions for Critical Thinking 1. Briefly describe the difference between a provisional patent application and a utility patent application. If successful, which of the two applications awards an inventor a patent? 2. Can a provisional patent application be filed for a design patent? Document your research to arrive at the correct answer to this question. 3. Under what circumstances would you (1) suggest to an inventor that he or she could file a provisional patent application without a patent attorney or (2) suggest to an inventor that he or she needs to hire a patent attorney to file the provisional patent application? 4. Spend some time studying the USPTO’s website, or doing some Internet research on patents. Inventor’s Digest (www.inventorsdigest.com) is another good resource for learning about patents. Discuss one fact about patents or the application process you find interesting and isn’t included in the material in this chapter.