On October 10, 2017, we published a post about why it is important to protect a company’s IP early on and examples of how to go about when protecting an invention/technology when your company is on a shoestring budget, Protecting Intellectual Property Before Your Company Is Funded. One of the suggestions discussed were provisional patent applications. In the right circumstances, and done properly, a provisional patent application can be a very useful tool for inventors but if it is prepared poorly you may, worst case, have no protection at all. So, how do you know what a good provisional patent application is? Should it be long or is a one-pager application better than nothing? And what can I expect to get help with from my lawyer when drafting a provisional patent application? This blog further describes how to make sure you have a useful provisional patent application for the intended purpose and how to understand what information is required to make the most out of the application.
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Do You Know Whether A Good Provisional Patent Application Should Be One Page or Several Hundred Pages Long?
In my practice as a patent attorney, I am often called on to review a United States provisional patent application that someone else has prepared and filed. I will refer to this as a “provisional” for short. It may surprise you to learn that provisionals come in a great variety of sizes and shapes. I have seen filed provisionals that are no more than a single page—essentially the proverbial sketch on the back of a napkin—and some that are several hundred pages of detailed technical information and drawings.
So which size of provisional—a single page or several hundred pages—should you ask for when you retain professional help to file a provisional on your latest invention? And if you’ve already had someone file a provisional on your invention, did you get a size that’s right for you? This article will help you answer those questions.
If you’re still reading at this point, you’re likely one of those people who have spent some time thinking about why you should file a patent application. Maybe the invention is for a new product or service for your company, and you want to improve your chance of getting funding. Maybe you have not finalized any plans yet for commercializing the invention, but you want to secure a filing date at a patent office as a starting point. Maybe your company’s business is in a very competitive field and you wish to let customers know that you have a valuable invention, and deter competitors from copying your idea.
The above examples are all good reasons why one should file a patent application. Now, do you know what is beneficial about filing a provisional first? Many are attracted by the fact that the patent office charges a lower filing fee for a provisional than for a regular patent application. But did you know that the patent office never examines a provisional application? That’s right, the provisional just acts as a placeholder for a limited time until you file what we sometimes call the “regular” application (the technical name for it is a non-provisional patent application). So the provisional may get you what we call a “filing date” for the invention, but you won’t be getting any examination of the idea based just on the provisional. Still, as I explain below, when the provisional is being prepared it is a good time to start thinking about how well (or poorly) the described ideas might fare if they were to be examined for patentability.
Another advantage that is important to many is that the provisional gives you a one-year period until you have to file the regular application (or applications in countries other than the United States). Use this year wisely! For example, you can do market research on the invention, explore your options for manufacturing, or seek investors or business partners for your enterprise. At the very least, the provisional allows you to wait a year until you pay the patent office its fees for the regular application.
Sounds great, right? With a relatively low filing fee to the patent office, you can reserve your spot in line (that is, your filing date) and then decide later how to proceed. But I’ve found that people sometimes don’t consider the possibility that the provisional could end up either not being effective, or it could actually end up hurting your interests. As you might expect, whether the provisional you file is one page or several hundred pages can affect both effectiveness and possible hurtfulness.
An Effective Provisional
When it comes to whether the provisional is effective from a patent perspective, the key question is: On the day when you file your regular application (which can be up to one year after you filed the provisional), are you better off from a patenting perspective than if you had skipped the provisional and just waited to the same day to file your regular application instead? There are at least two aspects to this question.
First, does your provisional show that the inventor was in possession of the invention that you are now claiming in the regular application? There are many cases where this is true. But if the provisional was written with little or no thought to how the invention should later be claimed, it can be more difficult to meet this test. The consequence if the test is not met is that the filing date of the provisional will not shield your invention against attacks based on references dated between the filing dates of your provisional and regular applications.
Second, is your provisional detailed enough that it teaches a skilled person how to make and use the invention? This is important because in return for getting a patent you are supposed to explain to the public how your invention works. Again, if your provisional is deficient in this regard the result may be that you don’t get any benefit of having filed the provisional. In both of the above scenarios the provisional could end up ineffective and, largely, a waste of time and money.
A Provisional That Hurts Your Interests
If the provisional is not prepared properly, it can actually end up hurting your interests. Now, you may already know that provisionals are initially not publicly available and in fact kept secret at the patent office, so perhaps that gives a false sense of security. But after you file your regular application, then the provisional could eventually become available for anyone to see. The potential hurtfulness could come into play when the patent is granted, if not earlier, and can happen in at least two different ways.
First, your provisional may contain more information than necessary, such as about the business you are running or planning to start. That’s right, it is not uncommon to see inexperienced companies take an all-or-nothing approach and bring up everything they have been working on, to the point where the provisional application describes the entire technical platform nuts-and-bolts without focus. It is certainly easy to understand the urge to include lots of information; you may believe this makes the patent stronger and broader. To some extent this can be true, but it can also reveal competitive information about your future business plans, or past technical endeavors that did not pan out.
Second, certain things written in a provisional application can become liabilities down the road when the text is read as a legal description, rather than as a technical or engineering description. For example, when you’re trying to enforce the patent against someone who is using the invention, particular statements in the provisional could be used to argue that your patent does not cover certain technology. Provisionals written without expert legal help are more likely to have this drawback.
Now, how do our initial alternatives above (a provisional of a single page or several hundred pages) fare in light of the above? Well, the one-page application is so short that it presumably contains only the essential information, and likely does not reveal very much unnecessary sensitive information. But you’d need to make sure it actually describes, and teaches how to make and use, the invention you will later be claiming, or the provisional could end up not being effective from a patenting standpoint.
So does that mean that putting in more information in the application is always a better choice, so that the hundreds-of-pages provisional is the best? Not necessarily. As we have seen, you may be revealing sensitive information about your business that is not relevant to the invention you will later pursue. And there is always the risk that the lengthy description will contain statements that can later be used to cast the invention in an unfavorable light.
In other words, there is no one-size-fits-all solution. Instead, the best approach is to think through your business objectives from the beginning, before you file the patent application (and this applies whether you will first file a provisional or if you’ll skip that and go directly to the regular application). Talk with an experienced patent professional about your business ideas, so that they can tailor the application to the future plans of your enterprise.
