Houston we have a problem: Provisional patent applications

As a patent attorney who has practiced twenty years, I am dismayed by the widespread misleading information about United States provisional patent applications. Do the requirements for a provisional application significantly differ from a non-provisional utility patent application? The answers may surprise you. For example, by law a provisional application must contain all the technical information required in a non-provisional utility application (including drawings) except for the claims. Utility patent applications only require one claim consisting of a single sentence but otherwise they are identical to provisional application counterparts in technical scope.

Claims can be changed, added or deleted before and after the non-provisional utility application becomes a patent. However, by law the remaining portions of the application, either provisional or non-provisional, cannot be substantively changed after submission to the patent office. Consequently, one can easily conclude that the addition of one initial claim to the technical information within the application does not require a great deal of time and thought. Another inescapable conclusion is that the time and detail devoted to a provisional application should be almost equal to a corresponding non–provisional application.

Let us assume that your business’s provisional application has been drafted and filed. Is your invention now protected for the one-year maximum lifetime of the application? The answer is definitely and unequivocally no. Although provisional applications initially require lower government fees, they never become patents unless additional fees are submitted prior to the non-extendable deadline. Patents are the only documents by which a lawsuit can be filed for infringement in the United States. Furthermore, in many instances the filing a provisional application in the United States will accelerate the deadline for submission in other countries.

The United States Patent Office does not publish provisional applications and so confidentiality is a temporary advantage of filing. However, there is an insidious side to provisional applications because they promote a false feeling of security. For example, imagine your business has sold its invention beginning July 1, 2010. By law, your business has until July 1, 2011(or next business day) to submit a corresponding non-provisional utility application in the United States. After that date you can no longer file the application and the invention becomes freely available to the public for use, sale and manufacture.

We now add a provisional application for the same invention to our example. Imagine that your business files this application with the patent office on May 2, 2010. Unknown to you this application is fatally incomplete because it does not contain the necessary technical information. The non-extendable July 1, 2011 deadline subsequently passes without the filing of a technically complete non-provisional utility application.

Now imagine that the provisional patent is properly converted to a utility patent application on May 1, 2011. On August 1, 2012 the patent office rejects the utility patent application because it lacks required technical information. The deadline for submitting a non-provisional application (July 1, 2011) has expired, and your invention is now freely available to the public to sell, use and manufacture. If the business owner had filed the technically complete non-provisional application prior to this deadline, then there would have been no forfeiture. The lesson? Do not allow your business to be lulled into a false sense of security by filing a provisional application.

© 2010 Adrienne B. Naumann

Ms. Naumann does not endorse or sponsors the advertisements at adriennebnaumann.wordpress.com

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