Throughout my thirty years of prosecuting United States (U.S.) patent applications, the following issues most consistently arose with clients: fees, provisional applications, subject matter eligibility and sufficient technical information.
Three kinds of fees are necessary for obtaining a U.S. utility patent.[1] First and foremost are attorney fees which are primarily allocated to drafting and submission of documents to the U.S. patent office. Secondly there are mandatory non-attorney patent office fees where the amounts primarily depend upon applicant characteristics such as business entity, individual natural person and income. Finally, there are non-attorney fees for costs such as postage and photocopies. This last category also includes non-attorney fees for outsourced professional application illustrations of the invention. There may also be consulting fees for evaluating and/or testing the invention. Consulting fees could run into thousands of dollars, or perhaps a few hundred dollars, depending upon the project. Many potential applicants are truly surprised at the extent of the fees.
By law, U.S. provisional applications must meet the same content requirements as a U.S. utility patent application.[2] However, a provisional application never becomes a patent unless it is affirmatively converted to a utility application within a year of the provisional’s submission.[3] Specifically, the provisional application must provide sufficient technical information to demonstrate that the inventor possessed of all the technical features when the application was originally submitted. Also under U.S. patent law, the application must comprise sufficient technical invention information so a person of ordinary skill in the relevant technology could, without undue experimentation, recreate the invention exclusively from the resulting patent.
Success in application prosecution and infringement litigation often requires obtaining the earliest submission date for a series of patents directed to a single invention. If this information is absent from the provisional application, then that application is fatally defective. The problem is that even if this defective provisional was the earliest filed, the subsequent related utility application(s) cannot generally reach back for the required technical information of the provisional application. A possible scenario is that the provisional application has the only filing date prior to the patent law’s application submission deadline. However, the subsequent utility applications cannot rely upon that earlier defective provisional filing date for information necessary to support a claim sentence submitted after the deadline expired. Without this missing technical information, the related applications filed after the expired deadline are therefore invalid and non-enforceable.[4]
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[1] There are also documents known as design patents. Design patents protect ornamental features upon a manufactured article. 35 U.S.C. section 171(a).
[2] Manual of Patent Examination Procedure section 601[Ninth Ed. Rev. June 2020] [hereinafter MPEP]; 35 U.S.C. sections 111(b), 112(a) and 113 However, provisional applications do not require a claim sentence as do utility patent applications.
[3] MPEP section 601; 35 U.S.C. section 111(b)(5).
[4] An early submission date may also be necessary to predate earlier existing devices which may result in the invention being anticipated or obvious. However, a provisional application is not entitled to the priority date of another application. 35 U.S.C. section 111(b)(7).owebH
Intellectual Property for Businesspeople 