Howard M. Cohn  │ Attorney  At  Law
21625 Chagrin Blvd., Suite 220. Cleveland, Ohio 44122

                                                                   Tel: 216.752.0955 • Fax: 216.752.0957

                                                                       Email: Howard.Cohn@ Cohnpatents.Com

Provisional Patent Applications

In recent years, inventors have turned to the provisional patent application as an inexpensive means of protecting their inventions.  Sometimes this is necessitated because an upcoming product release or trade show does not allow enough time to prepare and file a regular patent application before disclosing their invention to the world.  Instead, they rely on the provisional patent application to protect their invention until they have the time or money to prepare and file the more detailed utility patent application. 

What the provisional patent application provides, as well as what it fails to provide, are equally important.  While the provisional patent application is not as detailed nor as costly as a regular patent application, it is also not a legal instrument that can be learned in an afternoon at the library.

Improperly drafting of a provisional patent application can be more harmful than not using one at all.

The provisional application is often simpler and less detailed than the regular patent application, but then, its goals and benefits are somewhat different. 

• The provisional patent application provides the inventor with the all-important priority date.
• It offers an extra year of protection (which means instead of 20 years of protection if the patent is granted, it is 21 years).
• A 12-month period to more fully develop the product is provided (vital) if development includes financing of rather important functions not yet in place.)
• It doesn't require a specific format; in some cases, a design drawing and specification, a paper, or just a handwritten description along with a photograph is all that is filed.
• It is relatively inexpensive to file ($100 for smaller entities; for larger entities, $200).
• It requires far less paperwork to be filed.
• The provisional patent application is never examined by the U.S. Patent  Office, as with a regular patent application. It is only reviewed for formal maters such as to be sure a check is enclosed.
• After a provisional application is filed, the invention can be disclosed or sold without fear of losing patent rights so long as a full utility patent application is filed within a year of the filing date of the provisional.

The priority date is the important feature here because it establishes the date when the disclosed invention was first made practical.  To rely on the priority date, within one year of filing the provisional application, the inventor must file a regular patent application, basing it on the information contained in the provisional application.

What this provides is a one-year cushion.  During that year, as the product or concept is further developed, additional provisional applications can be filed and relied upon for the priority date.  Failure to file within one year of the original or subsequent provisional applications, results in the loss of the priority date.

Because the provisional application will not be substantively examined, claims defining the scope of the invention are unnecessary.  But to rely on the priority date of the provisional, the disclosed invention has to support the broadest invention that is ultimately claimed in the disclosed patent grant.

A description of the invention and supportive drawings are also part of the provisional application.  A provisional application can even protect a theoretically working model that is not yet reduced to practice.  Just as the filing fees are substantially reduced, so are the legal fees because far less work is involved.

Development should be continued with the goal of filing for a regular patent within one year of the priority date always foremost.  And as the development continues, it's often wise to file additional, more current provisional applications.  The provisional application is not a substitute for a regular patent application, which should be filed as soon as possible. We recommend that the provisional application be drafted with all the details available and then filed as soon as possible to obtain a priority date.

Special Considerations

          A little known fact is that in the United States, you can begin selling a product without first filing for a patent, file a provisional application up to a year later, and then file the regular utility a year after the filing date of the provisional application.  The effect is to gain a two-year grace period.  One downside of waiting the extra year is the loss of the ability to file patent applications to the invention in foreign countries.

          The most important and least understood aspect of the provisional application is that it must disclose all of the elements set forth in the claims of the later filed utility application. That is, the description of the invention must include enough detail for others to make or use the claimed invention in the later filed utility application.  Moreover, if the later filed utility application is challenged, and the written description in the provisional is found inadequate, all could be lost.

          A utility patent application is often written by drafting one or more of the claims first, so as to capture the invention in full, in all its possible variations, and in a way that a competitor cannot circumvent by making only unimportant and insubstantial changes.  From these claims, a detailed written description of the invention can be crafted to form the basis of a patent specification.  The patent specification also includes drawings showing the invention, a summary of the invention and a discussion of prior art.  Ultimately, the specification may contain more than what is claimed, but it can't contain less.  If the patent is ever challenged, the specification is used to interpret the meaning of the claims.

          A few years ago, the U.S. Court of Appeals for the Federal Circuit, handed down a decision in New Railhead MFG, LLC v. Vermeer Mfg. Co. invalidating New Railhead's patent.  The Railhead's patent covered a drill bit for horizontal drilling in rock.  Railhead sued a number of patent infringers using similar drill bits.  Ultimately Railhead lost because its utility patent was invalidated on the basis of the claimed drill bit defining a structural feature that had not been fully described in the provisional application.  Therefore, the provisional application was not applicable to the relevant claims and not available for its all-important filing date.  This caused New Railhead's utility patent to be rendered invalid because it was filed more than a year after the drill bit (initially disclosed in the provisional) was sold.

          The decision means that, although the provisional application does not require claims, it must clearly and exactly describe the invention and the manner and process of using it, in order to support the claims made for it in the later utility application.  But without the claims, how can a provisional be drafted to support them?

          The solution is straightforward.  Put more effort into the provisional application, no matter how rushed for time.  Consider the broadest scope of the invention and ensure that it is covered by the provisional.  This may require more money up front for the services of a patent attorney, but the much higher cost of having the patent invalidated later easily justifies the expense.

For more information, contact
Howard M. Cohn, Patent Attorney
ph  216-752-0955
ph  800-613-0955
e-mail howard.cohn@cohnpatents.com