The Provisional Patent Application: Myths, Realities… and new deadlines!

Inventors often wonder what path they should follow when it comes to filing a patent application. Most small companies with limited cash and unproven technologies are naturally attracted by the apparent cost deferral (but not necessarily cost savings) of filing a “provisional” application, as opposed to filing for the permanent application on day one. They also like the one year period the provisional application allows them before having to file their final application while deciding whether to commercialize their invention and invest further (or preferably find others do so).

Although opinions diverge among professionals as to its pros and cons, it remains true that a provisional patent application can usually be prepared quickly and for less money. Hence, it can be most useful where the applicant is so cash strapped that it cannot afford paying for the full application immediately, or when it is on the verge of a tradeshow, a conference or meeting with potential investors (who rarely will sign a NDA), all scenarios that can trigger a “public disclosure”. Note that this is mostly relevant if the inventor intends to seek protection outside of the US (since the disclosure would negate international rights), as the US still allows for a one year grace period to file domestically after such disclosure. Finally, it may impress those same early investors who tend to look for unique and –eventually- enforceable IP as an indicator of future commercial success.

But taking this route is not risk free; the final application will be limited to the patentable subject matter disclosed initially in the provisional, no more. So features or improvements not clearly described initially will not be covered. Hence, anything done too hastily or to save some money upfront may later feel penny wise pound foolish. Also, because the patent attorney will have to get reacquainted with the case a year later, the total cost of taking a two step process is likely to be higher at the end than filing just once in the beginning.

Regardless, provisional applications have become increasingly popular in this economy. And a recent announcement by the USPTO may skew the balance even further in this direction. Indeed, a few weeks ago, the US agency published a proposal by which it would offer an additional 12 month “extension” to the current 12 month patent provisional application period. Under the current rule, the applicant must convert their provisional filing to a full utility patent within 12 months thereof in order to retain their priority filing date and avoid their application being deemed abandoned. Under the proposed rule, the one year delay would still be in force (only Congress can change it), but the USPTO would “look the other way” for an additional year before sending a notice of “missing parts”, in fact giving the applicant up to 24 months to make a final decision regarding their application.

It should be noted however that this change would not affect foreign filings, which must still be filed within 12 months after the filing date of a provisional application in accordance with the Paris Convention. This means that the new proposed rule would not at all benefit applicants who wish to secure patent protection beyond the US territory, a common strategy nowadays as a result of globalization. Also, by exploiting the delayed payment, an applicant would forego their right to opt not to have the patent application published at 18 months from the provisional patent application filing date.

Many have argued that the USPTO’s proposal is primarily self-serving in a feeble attempt to mask its terrible backlog by leaving provisional applications “off the books” for a few more months and hoping more people will abandon their application. Furthermore, by encouraging delayed filings, the cash starved agency is poised to reap more of those extra fees required for late filing. Nevertheless, this proposed change wouldn’t really impact those who don’t want to take advantage of it and it is likely to provide added flexibility to the small entities for whom buying time and deferring patent related costs by a few months are paramount to their business strategy or very survival.

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