A bigger hanging tree: Provisional patent applications

My office is flooded by inventors who believe a U.S. provisional patent application protects their inventions for fewer fees than a U.S. utility patent application. As my previous article on this subject explained, a legally sufficient provisional application must be as technically comprehensive as a utility patent application for the identical invention. In fact the official government Manual on Patent Examination Procedure explicitly states this requirement in relevant sections of that document. Nevertheless, in this article I answer representative questions about provisional applications to dispel confusion on several issues.

1. One question posed is whether a provisional application can be filed as an international application. Provisional applications were not originally implemented by Congress for international filings outside the United States. However, there is an international administrative method by which to file one patent application in the United States that will be forwarded to several countries. Whether this application will qualify as a patent depends upon the patent law of the specific country. For example, some countries require that the applicant describe the invention in technical detail within the application. Consequently a provisional application that fulfils the technical and substantive requirements of a U.S. utility patent application is most likely to become a patent in these countries.

2. Another question posed is whether a provisional application and an international application can be ‘bundled’ for a discounted attorney fee. The short response to this question is that if properly drafted and filed in a timely manner, only one application is required, and therefore only one fee is necessary under most circumstances. This is necessarily the result because a technically sufficient provisional application can initially be filed for the intended legislative purpose of providing the same time for application pendency as for foreign applicants. This technically sufficient provisional application can then be converted to a U.S. utility patent application by a deadline which depends upon the provisional application filing date. In sum, the applicant does not require a separate application for international filings, because the term ‘international application’ is merely another designation for a utility patent application (that originally may have been a proper provisional application) in a different format.

3. Therefore, an international application should only require one additional fee, and this fee is solely for (i) changing the format of the U.S. utility patent application and (ii) NOT for rewriting the entire utility patent application. In fact, absent other circumstances there should only be one attorney fee for drafting a patent utility application; this utility patent application can then reformatted to an international application for submission through the proper administrative procedure: two separate application attorney draft are not necessary under these circumstances.

4. However, there are specific foreseeable circumstances under which the otherwise legally sufficient provisional application requires another attorney drafting fee. For example, the applicant may develop technical changes to the original invention, and these changes were not included in the initially filed provisional patent application. If the applicant intends to protect these changes (that were not included in the original provisional application), then the applicant must file another patent application (either provisional or utility) that sufficiently describes these additional changes. This second application is required by U.S. patent law, because changes to the invention cannot be added to a filed application. Under these circumstances, the second provisional application, after conversion to a utility patent application, can then be filed as another international application.
© 2013 Adrienne B. Naumann, Esq.
Ms. Naumann does not sponsor or endorse the advertisements at adrienebnaumann.wordpress.com

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