Provisional Patent Applications: Can You Provide an Adequate Description of the Invention?
The United States has moved a “first-to-file” patent system, so it behooves patent applicants to file patent applications early and often. Provisional patent applications can be useful in achieving that goal.
A provisional patent application is a temporary application that lasts for one year, by which time an ordinary (“non-provisional”) patent application must be filed in order to obtain the benefit of the provisional application’s filing date. Prospective patent applicants often want to file a provisional application rather than a non-provisional application, to save costs. While provisional applications are useful, a non-provisional application must be filed within one year of a provisional filing if the invention is to be pursued, so the initially saved cost will have to be incurred later anyway. From a cost standpoint then, filing a non-provisional now versus filing a provisional now and a non-provisional later is close to six versus a half-dozen. All things equal, filing a provisional first winds up being slightly more expensive.
Moreover, if done properly the initial provisional application isn’t that much cheaper than a non-provisional application. While lower-tier patent attorneys often prepare and file provisional patent applications very cheaply, such applications may serve little purpose other than giving the client a dangerous false sense of confidence. This is because a hastily-prepared application may not meet the requirements of the patent statutes, in which case the filing will have no value. The client won’t find this out until later though. The client will have been better off saving money and not filing an ill-prepared application, or spending a bit more at the outset to file a properly-written application.
The key statutory requirement here is 35 U.S.C. §112(a), which requires that all patent applications – provisional and non-provisional alike – “shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains … to make and use the same.”1 I have seen many provisional applications prepared by other attorneys that were so incomplete they certainly couldn’t satisfy this requirement. Clients in such cases sometimes come to me seeking a better-prepared follow-up non-provisional filing to be based on their earlier provisional application; unfortunately, I may have to advise the client that the provisional filing is not likely to have served much purpose.
Coming back to costs, there are two aspects of a provisional application that can save money in the short run: the Patent Office’s filing fee is about $670 less;2 and attorney time may be saved on drafting claims, which do not have to be included in provisional applications. As to claims, however, I caution against not including them in a provisional application. The process of drafting claims invariably helps focus the description and improve it in a number of ways; notably it tends to make the drafter include terms (if not concepts) in the description that might otherwise have gone unnoticed and unmentioned. An application that was originally drafted without claims will have to have claims written for it later, which presents an awkward and less than optimal task. This is particularly true when the Patent Office raises specific prior art in a rejection3, and the desired response would be to insert terms in the claims that are not supported by the application – and consequently are not allowed to be added to the claims.
All of this said, provisional applications should play a significant role in the filing strategy for many if not most clients. Since the U.S. is now a first-to-file system, there is a strong incentive to file patent applications as early as possible, and to file additional applications when any improvements are made to the invention. For example, some larger companies will often file a number of provisional applications in the course of a twelve-month period, and then file a non-provisional application claiming priority to all of them. As improvements are made and the description of the invention is refined, new stakes are posted, fencing out as much prior art as possible.
Also, as long as doing so doesn’t inhibit the client from diligently following up with another filing, it can be useful to file a provisional application perhaps before the invention is ready to be fully-described. At least an argument could be made in court (if the patent were challenged) that the filing was adequate, and perhaps it would prevail in part.
In summary, the filing of provisional applications can be a key strategy, but should not be expected to save any costs in the long run except where multiple provisional applications are filed on an invention within twelve months.
- In recent years the courts have generally raised the standards for complying with this requirement.
- This is based on the Patent Office’s pricing for a “small entity,” which is an individual or company with less than 500 employees (including affiliates). The fees, and savings for filing a provisional application, would be less if you qualify as a “micro-entity” (which is a small entity that also meets other requirements including a maximum income level), or more if your company is not a small entity.
- See the discussion of Patent Office rejections in the “How Long Does the Process Take?” Primer.