US provisional patents & patent strategy – why wouldn't you

Dennis Crouch over at Patently’O has just posted a note on some research he has done on the use of provisional patent applications by applicants in various jurisdictions, and by various big-name applicants in the US.

What’s astounding to me is that there is less than 100% uptake of the US provisional – the main reason being that it gives an extra 12 months ‘grace period’ under 35 USC 102(b) [that’s before you filed the application] in one of the world’s largest markets.

Why wouldn’t you file a US provisional?  Let me know what you think I’m missing.

8 Comments on “US provisional patents & patent strategy – why wouldn't you

  1. The only good use for provisionals that I see is for emergencies — e.g., when there’s been or will be a public disclosure at a trade conference within a dangerous window of time before a nonprovisional gets filed.Under 35 U.S.C. 112, your provisional has got to provide later-filed claims the same written description, enablement, and best mode support for your claims that a nonprovisional does in order to provide a good priority date.  For most applicants, most of the time, that means if you’re going to do it, you should do it right the first time — wait until you’ve got a solid specification, drawing, and claims, and file it then.

  2. I agree with Mr. Martin that provisionals are good in emergencies.  When I worked at a chemical company with lots of different technologies we decided to only file provisionals in emergency situations for everything but life sciences filings e.g., agricultural, pharmaceutical, where that extra year potentially made a big difference.  For other areas, the extra year does really buy anything because the technology cycle is so short that you don’t even maintain granted patents for their whole life, e.g. polymers, coatings, etc.  At my current company we file provisionals virtually all of the time.  When it comes to conversion time, we decide whether to convert on a case by case basis.  Sometimes, what looked great 9 month before doesn’t look so great when it comes to conversion time – maybe because we found art that covered the concept or that the concept wasn’t that marketable.

  3. Hi Michael and Joyce, thanks for your great comments, and welcome.I agree, you should get it right first time, if at all possible (though for some small entities there may be reason to get the best provisional on file that you can and follow up with a better one ASAP).Assuming that you do get things right, from the start, why give away the chance at 21 years instead of 20, merely for the sake of filing a different application form?Also – what about non-US entities – filing a US non-provisional isn’t usually an alternative that they would contemplate to a locally filed provisional (or full application).  Don’t you think they too should file a US provisional as well?

  4. Duncan,You raise a good point about non-U.S. entities.The reason that I said that it is usually not worth filing a provisional (except in emergencies) is that provisionals, like non-provisionals, are held to the same 112 standards in determining whether later-filed claims get the benefit of an earlier filing date.In the case of a non-U.S. entity that is concerned about their domestic filing not being given priority by the U.S. P.T.O., a provisional may indeed be a good way to provide evidence to the P.T.O. that it is indeed entitled to a particular priority date.The question that I’ll throw back to you, however, is this: don’t PCT domestic filings by non-U.S. entities provide essentially the same benefits as filing a provisional in the U.S.?  The only trap that I can see is that the PCT filing must be in English to avoid problems under 35 U.S.C. section 102(e).  So it might have to be translated, which costs more money.  Off the top of my head, I can’t remember whether U.S. provisional applications have to be in English to provide proper support for later-filed claims.  But I suspect that they must, in which case, it’s again a wash.  Either way, you have to translate.  Either way, you have to make sure you provide proper support for any later-filed claims.In patents, as in many areas of business, I believe that slow and steady wins the race.

  5. Thanks MichaelThe only way to get the extra twelve months of priority under 35 USC 102(b) – before your first filing date – is to file a US application of some description, or a PCT.A US provisional gives you two years of prior  art to ignore before you file the PCT application.RegardsDuncan

  6. I think it may have something to do with publication of the provisional, even if a corresponding full application is never filed…

  7. I agree with all these comments–Joyce in particular.  When I was in house at an appliance designer/MFG, a provisional was good in an emergency, but otherwise it simply delayed the “real” patent and added to the cost.  Product life cycle was short (and patent process already to long) to bother with a provisional.

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