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Don’t Cut Corners on Provisional Patent Filings

November 15, 2017

Patent offices often warn the public about blatant scams such as fake payment notifications sent by third parties, but do not generally warn the public about other less-overt rip-offs or pitfalls.  In many cases, practitioners that simply take a summary of an invention prepared by an inventor and file it without significant amendment as a “provisional patent application” are providing a disservice to their clients and may, in fact, harm their client’s ability to obtain adequate protection for their invention.

To understand why badly-drafted provisional applications can prejudice an applicant’s rights, it is first necessary to understand what a provisional application is.  A provisional application is a special patent application filed in the U.S. and having a limited lifespan.  The provisional application acts a placeholder for up to 12 months, during which time the applicant may file non-provisional filings (both in the U.S. and outside of the U.S.) for the same invention.  Such non-provisional applications may be entitled to benefit from the filing date of the provisional application, meaning that patent offices will determine whether the invention is patentable by reviewing references and disclosures dated before the filing date of the provisional application; references from after this date are not considered in assessing whether the claimed invention is, in fact, new and inventive.

Provisional applications have some enticing benefits over non-provisional applications, particularly for start-ups and other budget-conscious applicants.  For example, the filing requirements for a provisional application are less onerous than a non-provisional application and government fees are significantly less than for a non-provisional application. 

Due to the reduced government fees and the less-onerous filing requirements, provisional applications have gained a reputation as a cheap form of interim protection.   Indeed, provisional applications can be useful in deferring at least some filing costs.  However, while provisional applications are generally less expensive than non-provisional applications, their reputation as a “cheap” form of patent protection sometimes causes applicants to cut corners when filing such applications.  For example, recent research indicates that a surprising number of provisional applications may be of low quality and may not include sufficient detail to support the claims of non-provisional applications filed based on such provisional applications. 

Since a later patent filing is only entitled to benefit from the filing date of an earlier provisional application if the provisional application adequately supports the claims of the non-provisional application, a poorly drafted provisional application can result in a loss of rights.  There are numerous instances where courts have held that a non-provisional application is not eligible to benefit from the filing date of a provisional application due to an insufficient disclosure in the provisional application (See, for example, New Railhead Mfg. LLC v. Vermeer Mfg. Co. et al., 298 F.3d 1290; 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002); Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center v. Eli Lilly and Company, 849 F.3d 1049 (Fed. Cir. 2017); Phigenix, Inc. v. Genentech Inc., 238 F.Supp.3d 1177 (N.D. Cal. 2017); Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017)).  In at least some of these cases, the consequence of not being entitled to the earlier filing date resulted in a complete loss of rights. 

Poorly-drafted provisional applications can also provide a means of attacking a non-provisional application since the provisional application can be used to interpret the claims of a non-provisional application that claims the benefit of the filing date of the provisional application.  For example, in the recent U.S. decision of MPHJ Tech v. Ricoh (Fed. Cir. 2017)) certain statements in a provisional application that were excluded from a non-provisional application were used to interpret the claims of the non-provisional application. 

In summary, while provisional applications can be a very useful tool in a patent-filers toolbox, care should be taken to ensure that poorly-drafted provisional applications do not do more harm than good. 

 

Information in this article is for information only. It is not, and should not be taken as, legal advice. If you have any questions relating to the information in the above article or any intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.