The following article appears in the journal JOM, 52 (2) (2000), p. 88. JOM is a publication of The Minerals, Metals & Materials Society

Proceed with Caution with U.S. Provisional Patent Applications

As a result of the United States’ adherence to the General Agreement on Tariffs and Trade (GATT), a number of major changes in U.S. patent law became effective on June 8, 1995. One of the changes involved substituting for the prior patent term of 17 years from the date of grant a patent term that expires 20 years from the filing date of the application for all applications filed after June 8, 1995. A further change involved creation of the provisional application, which offers meaningful benefits and places a U.S. applicant for U.S. patents on equal footing with applicants from outside of the United States. Unfortunately, a great deal of the writings regarding the provisional application have focused solely on the positive aspects and have ignored or given little weight to certain negative aspects that should be given consideration in reaching a decision regarding whether to file such an application.

In some respects, a provisional application gives the applicant the best of both worlds. The filing date of a provisional application does not begin the 20 year period of the U.S. patent. It does, however, provide a priority date that, when perfected by subsequent filing of a complete application, will enable one to avoid what otherwise might have been prior art and statutory bars to the filing of a patent application.

A provisional application lapses one year after its filing. Within that period, the applicant may file a complete application claiming the benefit of the provisional application. The complete application would, therefore, have the priority date benefit of the provisional, but would have its term measured from the actual filing date of the subsequently filed complete application.

A provisional application also offers the opportunity for an inexpensive filing. A provisional application must have a specification setting forth the invention in such a manner as to satisfy the statutory disclosure requirements. More specifically, the specification must contain a written description of the invention and a sufficiently detailed disclosure as to enable a person skilled in the art to which it pertains to practice the invention without having to engage in undue experimentation. It also must disclose the best mode of practicing the invention known to the applicant at that time. Where the invention is susceptible to it, the application must also contain drawings. The application need not have claims; a filing date is obtained by submitting the disclosure and, if appropriate, drawings with the government fee and a cover sheet identifying the application as a provisional application. The cover sheet must identify and give the residence of the inventor or inventors and title of the invention.

The provisional application cannot claim the benefit of any other application. A complete regular application may, however, be converted into a provisional application under certain conditions, provided that the application has not been abandoned, the issue fee has not been paid, and the conversion is effected prior to one year after the filing date of the complete nonprovisional application.

Provisional applications are not subject to U.S. Patent and Trademark Office examination. Only after a complete application has been filed will examination be initiated. As a result, information disclosure statements identifying prior art that might be material to a decision on patentability should not be submitted.

Provisional applications can be extremely helpful under a number of circumstances. For example, if a publication is to occur within a few days and forfeiture of foreign rights is not desired, a provisional application can be filed prior to the date of publication and a complete nonprovisional application can be filed within one year thereafter, thereby avoiding the forfeiture. Also, owners of inventions who are not certain about the commercial potential and value of an invention may wish to minimize the expense of preserving rights therein by filing a provisional application.

With all of the foregoing benefits of provisional applications, what could go wrong? One problem that occurs frequently is that the provisional application, which was filed with a somewhat sketchy disclosure and no claims, is the subject of a later-filed complete application based upon the provisional. With the benefit of additional technical information generated in the intervening period between the two filings or the need for the first time to claim the invention, serious issues as to whether the provisional had adequate disclosure to satisfy the statute’s disclosure requirement regarding broadening or to support the breadth of the claimcan arise. This results in uncertainty as to whether the effective date of the added increment of disclosure or claiming is the date when the provisional application was filed or when the actual complete application was filed.

One way to avoid this dilemma or minimize the risk is to file a provisional that has a complete specification and claims directed toward all aspects of the invention known at the time the provisional was filed. This approach, while increasing the cost of the provisional filing, minimizes the risk that important aspects of the technology will be of uncertain value, depending upon the filing date of the provisional, the filing date of a later-filed complete application, and any intervening prior art or conduct that could generate a forfeiture of patent rights. It also preserves all of the other benefits of the provisional application.

Another problem is that the provisional application generally will not result in a savings unless the complete application is not filed subsequently. Assume that a somewhat sketchy provisional application is filed at less cost than a complete application, and within a year thereafter, a complete application was prepared and filed. Rather than getting up to speed on the technology only once in filing a single application, effort had to be put into filing the provisional application. Subsequently, the provisional must be regarded as being in the nature of a technical disclosure and a regular or complete nonprovisional application must be created. This effort during two different time periods will generally result in increased costs. If, on the other hand, a complete application were filed as the provisional application, the filing of the regular complete application within one year after filing the provisional application becomes a fairly easy chore.

In summary, in many instances, a provisional application can be a blessing that avoids forfeiture and provides an early filing date in terms of priority while not starting the 20 year term of the patent. It is very important, however, before making a decision to proceed, to determine what quality provisional application will be filed and to evaluate potential negative aspects.

Arnold B. Silverman is chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.