[Before you read this post, read the IP Strategist disclaimer]
Patents can be very valuable, but also very expensive. So what about “provisional patents”? I almost always talk people out of filing provisionals. However, as with all other forms of IP, provisionals have their place. And when used in the right ways at the right times for the right reasons, they can provide tremendous value.
What is a provisional patent application?
Almost all granted, enforceable patents are “utility patents” (i.e., they are directed to utilitarian innovations, as opposed to aesthetic-types of innovations), also known as “non-provisionals” or “non-provisional patents.” While a utility patent is in the examination process, it is a utility, or non-provisional, patent application. The U.S. also has a special IP instrument, called a “provisional.” A provisional is essentially a temporary stake in the sand with some notable features:
- Provisionals are temporary. A provisional is never examined, never granted, and never enforceable. As such, while people sometimes refer to provisional patents, there is technically no such thing; a provisional is always an application (a “provisional patent application”). A provisional patent application will automatically expire, unless a corresponding utility application is filed within 12 months of the provisional filing date (corresponding here means the utility application explicitly claims priority to the provisional application). In other words, provisional applications do not automatically mature into utility patents; if you do nothing, the provisional application will effectively disappear as if it were never filed.
- Provisionals can be informal. Filing a utility patent application requires a number of formalities, such as formal patent claims and formal patent drawings. A provisional patent application can be considered complete by the Patent Office, even if it only includes whatever minimum description and/or drawing(s) are needed to understand the invention, the filing fee, and some bibliographical information (e.g., a form provisional cover sheet and names of the inventors).
All forms of IP, including provisional patents, should be viewed as tools in a toolbox for protecting, leveraging, and sustaining value (see previous post about A-PLuS strategies). And deciding whether and how to use those tools can be highly dependent on the facts of a particular instance. The following is a discussion of some pros and cons of provisional applications that should be evaluated when making such a decision.
PRO: Provisional applications can be relatively inexpensive to prepare and file
The current fee schedule published by the U.S. Patent Office shows the provisional patent filing fee as $260 for large entities, $130 for small entities (e.g., most small businesses, start-ups, universities, etc.), and $65 for micro-entities (e.g., many individual inventors and very-early-stage start-ups). In comparison, the utility filing fees are currently $1,600, $730, and $400 for large, small, and micro-entities, respectively.
Further, as discussed above, provisional patent applications can be much less formal than their utility counterparts, which can translate into much faster and less expensive preparation. For example, a provisional application can be little more than a short write-up of the invention; a Powerpoint slide deck; a set of screenshots, photos, or CAD drawings; etc. Note that I say “can” be inexpensive to prepare. As with most things in life, you typically get what you pay for with provisional applications – sparse, informal descriptions can have a number of drawbacks, and may render the provisional essentially valueless. But there are a number of strategic uses for such “quick and dirty” provisional applications, as discussed below.
TIP: When filing a utility application for an invention that benefits from lots of images (e.g., photos of a widget, screenshots of an application, etc.), I sometimes file the images as a provisional application before filing the utility application and claim priority to the provisional. This can be a quick and inexpensive way to get those images incorporated into the utility application without worrying about formalizing the images into patent drawings.
CON: Using provisional applications can add cost in the long term
Suppose an attorney estimates that preparing and filing a good utility application will cost $8,000 – $10,000, while preparing and filing a provisional application will only cost $2,000. This is certainly a significant savings, but only in the short term. And where cash flow is a concern, there may be a high time value of money. But, as informalities and other shortcuts are being exploited to drive down the cost of the provisional application, almost everything being done informally to draft the provisional will have to be redone formally when drafting the utility application. So the total cost will most likely be close to the sum of the estimates: $10-12K.
PROTECTION AND PRIORITY
PRO: A provisional filing establishes a priority date.
The filing date of the provisional application will be treated as the priority date for any inventions that are sufficiently described in the provisional application. For example, if an invention is sufficiently described in a provisional application filed on June 1, 2017, and a utility application is filed for that invention (claiming priority to the provisional application) on June 1, 2018, the effective filing date for the utility filing will be the earlier June 1, 2017 date. In patent parlance, “sufficiently described” means that the description must enable one having ordinary skill in the art to practice the invention. Basically, if you are inventing a new kind of automotive sensor, you just have to describe it well enough for a car part expert or a sensor expert be able to make the sensor using your description and whatever would generally be known by someone in that field.
TIP: As soon as the provisional application is filed, regardless of the quality of the provisional, you can mark the invention with “patent pending.” Many companies have found that such a designation can create a valuable commercial impression, as it can convey an appearance of technological superiority and distinctiveness (even though the designation may actually mean little or nothing in those regards).
CON: A provisional filing can provide a false sense of priority.
It is very common for people to file a provisional as the “cheap” option. People think they can simply file a set of pictures or a short write up as a provisional, pay a small filing fee, and get their priority date. Then, as that thinking goes, they can wait a year to pay for a full utility filing without fear of losing rights to the invention. But, like with most things in life, you get what you pay for! A mediocre provisional application will provide mediocre protection, or none at all. Meanwhile, in the time you wait to file your utility application, you may be left exposed without any real protection for your invention; and you may in fact be giving up your right to protect your invention later. Patent value comes from protecting the right innovative aspects in the right way at the right time. And that takes time, thought, effort, and skill. Drafting a cheap provisional application means cranking out work product without sufficient consideration of patent scope, terminology, claim approach, literal support, jurisdictional concerns, timing considerations, and the many other complexities of drafting a valuable patent.
PRO: Provisional applications can be used to delay the start of prosecution.
In addition to being potentially less expensive to prepare and file, provisional applications are never examined. With utility applications, after filing, the applications enter a “prosecution” phase, during which the Patent Office reviews the application, and there is typically a back-and-forth negotiation with the Patent Office over the scope of protection and other formalities. The prosecution phase can be of unpredictable cost and duration, and is often frustrating from a cash flow perspective. Accordingly, filing a provisional application, then waiting a year to file the utility application, can potentially delay the start of the prosecution phase (and the associated costs and frustrations) by a year. Further, because the provisional application is not being examined and is not public, the scope of the provisional application is unpredictable and unknown. That creates a type of temporary risk that can sometimes be leveraged in the market. Note, however, that such risk can also cause more sophisticated parties to discount the value of your IP until the scope of protection is more established.
Further, filing the provisional application can potentially extend your patent’s term. Utility patents typically last for 20 years from the filing date of the utility patent, even if claiming priority to a provisional filing. So in the above example, the 20-year patent term would be calculated from the July 1, 2018 filing date, even though the effective priority date of the patent would be go back to July 1, 2017.
CON: Filing a provisional application may add unwanted delay.
When you file a utility application, the application gets put in line for examination by the Patent Office. And for many technologies, there is such a large examination backlog that it can take years before substantive examination of the application even begins. But provisional applications are not examined, and filing the provisional application does not put you in line for examination. So the time between your provisional and utility filings can effectively delay the start of your time in line. While this can also extend the life of the patent (as discussed above), most modern technologies will not benefit from a 21st year of protection, as they are long past obsolescence by then.
Also, filing a provisional application can start certain clocks before you may be ready. Though a provisional application is not examined, it does count as a filing (assuming you want to rely on it later for priority). And that can be relevant in a number of ways. For example, if you want to take advantage of the filing date of your provisional application, you only have one year from the provisional filing date to file a utility application and/or any foreign applications to the disclosed innovations. So if you will not be ready in a year to pay for the utility filing, to settle on claim scope, to make foreign filing decisions, to pay for foreign filings, etc.; you may want to consider whether it is worth pulling the trigger (assuming you are able to delay without losing rights).
PRO: A provisional application can temporarily provide both protection and secrecy.
While a provisional application is pending, it is not accessible (e.g., searchable) by the public. In fact, during that time, there is not even a publicly accessible record that a provisional has been filed. So you can file the provisional, establish a priority date, and continue to keep the invention secret for up to 12 months.
Further, unless you use the provisional as a priority document for a later filing, the Patent Office will never make it public and the application will not be publicly accessible. So it is up to you whether to use it and make it public, or not use it and keep it secret. For example, if you need it to establish a priority date for a U.S. or foreign patent filing, you can choose to claim priority to the provisional and it will eventually become public. On the other hand, if it is more valuable to keep the disclosure secret (e.g., it is more valuable as a trade secret, the implementations details are still very uncertain, you don’t have funds for a utility filing in a year, etc.), you can choose not to claim priority to the provisional, and it will simply expire and stay secret.
TIP: During the pendency of the provisional, even while keeping the contents of the application confidential, you can refer to the provisional application in agreements for non-disclosure, confidentiality, joint development, licensing, etc. This can be a good way to give teeth to these agreements without having to publicly disclose the details of the invention.
CON: You can’t have both protection and secrecy forever.
The provisional application will automatically expire a year after filing. After that year passes, you must have made one of two choices: Either you let the provisional lapse (e.g., let the provisional become abandoned without using it as priority for a utility application) and lost protection; or you filed another patent application claiming priority to the provisional and lost secrecy (as discussed above, the provisional application will eventually become publicly accessible if it is used for priority). So care must be taken to remember that getting secret protection from a provisional is only temporary.