Provisional Patent Applications

Now that the America Invents Act (“AIA”) has changed everything, it is important to be the first to file for an invention.  Quite simply, the first to file gets the patent (assuming that there is a patentable invention), and a provisional could be a good way to lock in an early date.  It is cheaper to prepare (there are no claims), and cheaper to file (it is not examined in the usual case).  What is not to like?

I say “could be” because like a will you don’t know whether you have a good one until it is needed.  In other words, a provisional is only good to lock in a date if it is well prepared.  If a provisional doesn’t have adequate disclosure, then it won’t work.  If there is new disclosure in the non-provisional, and claims which depend on the new disclosure, they might not get the benefit of the provisional.  Also, a non-provisional must be filed within a year (along with any foreign applications or PCT application) or they can’t claim priority from the provisional (in fact, under some circumstances a PCT might not be able to claim any priority).

Let’s take a look how this might all play out in an example.  Abel files a provisional on January 1, 2015.  Baker independently invents the same thing, and files a non-provisional on September 1, 2015.  Able then files a non-provisonal on December 31, 2015, and claims priority to his earlier provisional.

In this case the examiner will pull the provisional and read it.   If she thinks that the provisional does not support the claims being made in the non-provisonal, then Baker might be considered the first to file (that will depend on whats in his application), and get the patent (if there is one to be had).  But it doesnt stop there.  The decision by the examiner is not binding upon a court should there be subsequent infringement litigation.

So, you can see why it is important to have a provisional that is well drafted, and the attorney drafting the non-provisonal will want to craft at least one of the claims so as to clearly take advantage of the provisional disclosure.

It is good to keep in mind what you need, and don’t need.  You don’t need a working model, and so long as the disclosure is sufficient to teach a person of ordinary skill in the art how to make and use the invention, it should be enough.  In other words, if an engineer is only going to make a prototype, or a working model, then evaluate whether you should file a provisional without delay.  Your best advice is to consult with a patent attorney on this question. 

`© Robert Rose 2015