A Provisional Application – An important tool in the Right hands As it’s name suggests a Provisional Application is just that, it is a temporary or interim application filed with a Patent Office before making a Final or Complete application.
A provisional application sets the scene for an invention. It provides a framework that an inventor can use to develop an idea, investigate some of it’s commercial implications and explore possible markets before being burdened with the cost and effort of gaining full legal protection by filing a Completed Application.
Although, not in itself, enough to monopolise an invention a provisional application will provide an applicant with an all important priority date and patent pending number. As such, Provisional applications are widely used by inventors as a low-cost option for beginning the Patent process.
The provisional application signals to the market the serious intent of an inventor to commercialise an invention and allows prototypes to be made, products to be marked with the patent pending number and the invention to be publicly disclosed and sold without losing the ability to seek full monopoly rights within the following 12 months.
A Provisional patent when drafted with care is an excellent way for an inventor to enter a market place early in the life of a new product or process. It is also common for shrewd inventors, not enamoured by the prospect of selling their products door-to-door, to use their Provisional Applications to publicise their inventions and to stimulate interest amongst possible licensees and/or distributors.
In short a Provisional application places the market on notice illustrating the serious intent of an inventor. A well-written provisional can create and maintain a strong market position, and as the saying goes “win friends and influence people”.
If you wish to learn more about Filing a Provisional Patent Application or have any questions about what is patentable, or when to file a Patent, please contact a Patent Professional or send me an e-mail at icockburn@piperpat.com
Requirements of a Provisional Patent Although, there are very few requirements for filing a Provisional Patent, a Provisional application should always incorporate one absolute essential: That is, it must provide enough details for a skilled worker to duplicate the invention and “that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention”. [See 35 U.S.C. 112, 1st paragraph]. As long as this fundamental obligation is met there is little else that is required. A Provisional patent does not have to have Claims and does not need to follow any particular format. In fact, many Provisionals are often quickly cobbled variations of scientific papers, design or product specifications.
Because of the relative informality of Provisional Applications many inventors are under the misapprehension that any idea or a concept can somehow be protected. Wrong! The only thing that can be protected is the manifestation of a novel product or process via a patent, or the expression of an original idea by means of copyright. Of course, the patent doesn’t have to show all of the minutia of the invention, many such details have yet to be finally developed, but if someone later challenges the patent and the written description is found to be inadequate then the consequences could be catastrophic.
Therefore, when preparing a provisional application it is important to consider what the final document might look like. In this regard, and most certainly for all US Provisional applications, it is imperative that when an apparatus is the subject of the patent that the description is supported by drawings clearly illustrating the inventive features of the apparatus.
Many Provisional Patents that are filed are filed in haste or without thought for the Final Application. Later, if tested in court they would undoubtedly fail for lack of sufficient support for the invention. So, please do not be seduced by the word Provisional or the comparative inexpense of filing the application in the hope that any omissions can be rectified in the future. Near enough is seldom good enough and, is never ever good enough when it comes to preparing and filing Patent applications. The cost of seeking professional help and gaining a properly drafted Patent will give both you, and any likely partners, distributors or licensees confidence that your Patent rights are enforceable and that your products will not be copied without risk of severe penalties to those that infringe. www.uspto.gov
Is a Provisional Patent Recognised Internationally?
Yes! Most countries recognize a Provisional application as being the legal starting point for an invention. All major countries such as the United States, Australia, Singapore, Japan, UK, China and New Zealand allow and encourage the filing of a provisional patent application to secure a "priority" filing date.
Importantly, a provisional application is given a priority date and a patent pending number and is valid for one year. Please be aware though that to retain the priority, a Final or Complete Patent application, or any foreign filing must be filed before the 12-month anniversary of the date of filing the provisional patent application or the original filing date will be lost.
Other features to be aware of are that a Provisional Patent is not examined and its contents remain secret to the public.
This means that the inventor is very much in control of the information concerning his invention and can disclose it, or not, depending on his situation. This is extremely advantageous and can give an inventor considerable leverage in the marketplace. In such a case, the Provisional Application not only serves to establish a priority date for a later filed Regular United States or foreign patent application it also acts as a deterrent to competitors and other would-be copiers. Please also note, that in many countries, if a provisional application is to be filed in a country other than the country of origin it is necessary to obtain permission to do so from your local Patent Office.
Another feature to understand is that the life of a patent is 20 years from Filing of the Regular or Completed Patent. The filing of a provisional patent first, followed 12 months later by filing a Regular Patent can in effect give the patent a 21-year lifetime.
Provisional Patent Applications – Advantages and Disadvantages When properly drafted and managed there are few disadvantages to filing a provisional application.
However, if a provisional is prepared and filed in haste without thought to the final Claims then the consequences can be devastating.
Advantages:
Relatively inexpensive to file.
Comparatively easy to prepare - a less complicated document.
Is given a “priority” status with Patent pending Number and Priority date.
Can be used as basis for filing foreign applications within 12-month window.
Enables potential markets to be explored, likely distributors & licensees to be found.
Enables products to marked “patent pending:
Enables products to be sold, advertised without affecting novelty requirements.
Provisional Patent Specification remains secret ie is not published.
Delays downstream patent costs, such as official fees, attorney fees.
Disadvantages:
Relative ease of Filing may result in Inadequate Disclosure.
Full implication of the Invention not understood at early stage in a product’s life.
Many Provisionals are hastily prepared and lack Substantive Supporting Drawings.
Filing of a Provisional Application may result in premature public disclosure.
Disclaimer: PIPERS endeavours to be as accurate as possible when preparing its articles and has taken all reasonable steps to ensure that the information contained herein is accurate. The contents of this article are for purposes of information only. If the contents of this article require your further consideration please seek the advice of an IP professional or visit www.piperpat.com
Got a Good idea Think Provisional Patent - To learn more about this author, visit Ian Cockburn's Website.
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