BEWARE OF FILING PROVISIONAL APPLICATIONS ON INVENTIONS
The popular press has made it appear that provisional applications are the way to go and that it saves money. Nothing could be farther from the truth.
The actual filing fee in the United States Patent and Trademark Office (USPTO) is low for a provisional application, but that is only a small portion of the total investment for any kind of patent application. A complete application (creatively termed a “non-provisional application” by the USPTO) must be filed within one year and no extension is possible. Because it has become a two step process (provisional, and then full, application), the total cost is greater than for a unitary full application process. If foreign filing is to be done, those costs arise at the same time as the U.S. full application.
More importantly, a provisional application is not a quick and dirty let’s get something on file and we’ll complete it later. If the application is not properly written and complete, disaster may strike months or years later. The filing date for the provisional application is good only for the technical information that is properly and completely described. Anything missing may be lost forever and could result in a patent which eventually issues being invalid.
Thus, provisional applications should be filed only after they are properly prepared in accordance with the patent laws and rules.
Further, outside of AIA considerations discussed elsewhere inn this Newsletter, there are few circumstances where it is appropriate to file a provisional application at all. One is when the invention is to be disclosed by publication or at a conference in a very few days and there simply is not sufficient time to prepare a complete application with appropriately drafted claims. Even then, every effort must be made to prepare a complete disclosure, even if the format and editing are not perfected.
Other instances are where an application is necessary to preserve a date but the applicant knows he may not go forward with the project or with a full application unless appropriate financing is procured, or where the technology is iffy and may be dropped in less than one year.
There is one other legitimate purpose for a provisional application. Because a provisional application is not examined, it does not count as part of the 20-year term of the patent which eventually issues. In effect, filing a provisional application is a way of getting 21 years of patent life. Of course, very few patents have any real value at 20 years anyway.
The bottom line is that provisional applications are not a panacea for applicants who don’t want to spend the money for a patent application. And they are not in any way to be considered a substitute for a full patent application. A provisional application will never, itself, become a patent.