Do's and Don'ts: Provisional Patents in a First-to-File World - Priori

Do's and Don'ts: Provisional Patents in a First-to-File World

By Mark Koffsky

This post is part of Priori’s new blog series “From Our Network,” where we feature lawyers in our network discussing important issues small businesses face. In today’s post, intellectual property lawyer Mark Koffsky discusses recent changes to the patent system and how your small business can benefit from provisional patents.

This past March, the patent landscape in the US radically changed as we moved from a “first-to-invent” to a “first-to-file” system. In the old “first-to-invent” system, inventors could often rely on their prior work to get around a pesky prior art reference or to grab patent rights away from someone else who invented later but was quicker in getting his or her patent application filed. That is no longer true. Today, the only thing that matters when evaluating the date of your patent application is what you file in the U.S. Patent and Trademark Office (Patent Office) and when you file it. Nothing else counts.

Let’s take an example. SmallCorp and BigCorp are pursuing a new invention that will change the world. SmallCorp completes its invention on April 1, 2011. BigCorp completes its invention on May 1, 2011 and because it has lots of money and lawyers on staff, it is able to file a patent application on June 1, 2011. SmallCorp does not have this budget and is only able to file its patent application on November 1, 2011. Nonetheless, under the old “first-in-invent” system, SmallCorp gets the patent because it invented before BigCorp (even though SmallCorp filed last).

Now fast-forward two years with the same facts: SmallCorp invents on April 1, 2013 but does not file until November 1, 2013. In the meantime, BigCorp invents on May 1, 2013 and files on June 1, 2013. Because we are now in a “first-to-file” system, BigCorp gets the patent (even though SmallCorp invented first).

Thus, the new “first-to-file” system puts small companies with limited budgets at a tremendous disadvantage in the race to the Patent Office. You can lose your patent even if you are the first inventor simply because you were not fast enough in getting your application in on time.

So how does the small business owner compete? A provisional patent application might be the answer. A provisional application can be used to establish an earlier filing date for a later‐filed non‐provisional (formal) application, if: (1) the non‐provisional is filed within one year of the provisional filing; and (2) the provisional application adequately describes and enables the subject matter claimed in the later non-provisional application. The filing fee for a provisional is low (currently $130 for a small business) and the application can be informal.

Like everything in the law, provisional applications have traps for the unwary. Here are some “do’s” and “don’ts” to keep in mind:

DO understand what a provisional application is and what it is not. A provisional is not examined by the Patent Office. Its only purpose is to prove an earlier filing date for a later-filed formal application if that ever becomes necessary.

DO file multiple provisional applications as innovation develops. If you reach a major point in your development, file a provisional to lock-in the date for that innovation. If further innovation occurs, file another provisional to lock-in that date for the later work.

DON’T be lulled into a “false sense of security” based on a provisional application. The only material that is protected is what is actually in the application. Anything developed later on or that you forgot to put into the provisional does not count and will not help you.

DON’T include anything in a provisional application that you would not mind becoming public someday. Although provisional applications are secret when filed, a provisional is public once a patent application referencing it is published by the Patent Office (usually 18 month later). Leave out financial projections, trade secrets, customer lists or anything else that is unrelated to the invention.

DON’T forget to file the non-provisional (formal) patent application within a year from filing the earliest-claimed provisional date. If you miss the deadline, it’s gone forever. No exceptions!

When used properly, provisional applications can be a key tool in protecting your innovation and deferring patent filing costs. That’s a win-win scenario every innovator should consider.

Questions about how to use provisional patents to protect your intellectual property? If so, submit your questions in the comments section below, twitter, facebook or to before Wednesday 1/8 at 11:59pm and Mark will pick 1-2 to answer. We will post his answers to the blog later this week.

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