Law & Business Podcast Episode 32: I Want a Provisional Patent

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It’s Episode 32 of the Law & Business Podcast.

Anthony Verna and Wil Jacques talk about the possibilities of a provisional patent application (PPA).  Many potential clients call asking for a provisional without really understanding that the provisional patent application only gives a one-year extension to the deadline of filing a full patent application.

Pros of a provisional:

• a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a micro entity
• cost less to prepare from an attorney fee perspective because there are no formal requirements, which means we can focus on disclosing the invention in its full detail while still preparing an exceptionally detailed application that costs a fraction of the cost of a nonprovisional patent application
• it is a filing that counts in a first-to-file scheme – used to secure an early filing date
• A PPA is also held in confidence with the USPTO, even if it is not converted to a regular application. More specifically, a PPA will not be published by the USPTO unless a later filed published application or issued patent claims the benefit of the PPA’s earlier filing date.
• no requirement that a PPA include any claims to an invention.
  • 35 U.S.C. 112 (a). Those requirements can be divided into an “enablement requirement” and a “best mode requirement.” Section 112 (a) specifically states:
    • The enablement requirement
      • “the specification 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, or with which it is most nearly connected, to make and use the same, and”
    • The best mode requirement
      • “shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
    • In other words, a PPA must disclose enough information that a person having ordinary skill in the same technology would recognize that the invention claimed in a later-filed non-provisional application is described in the PPA upon which it relies. If the PPA description is inadequate and does not meet these requirements, than a later filed regular application cannot claim the benefits of the PPA’s earlier filing date.

Cons:

• pre-filing disclosures permitted by the USPTO may in fact disallow patenting in some foreign countries. Furthermore, even in the U.S., if the pre-filing disclosures are made more than one year before the filing date of the provisional patent application, patenting in the U.S. is likewise precluded.
• Although the initial cost is low, the required follow-up non-provisional filing fee means that the applicant is actually paying two fees to achieve what an initial non-provisional filing might have accomplished.
• The provisional patent application preserves the date and renders temporary protection but does not fully protect the invention unless and until the subsequent non-provisional filing or conversion filing meets all of the formal requirements for patent protection. Accordingly, some applicants may gain a false sense of patent protection when they in fact may wind up with no protection at all if the latter application or conversion does not meet with the examiner’s approval  (No formal examination and no issuance)

Here is a lightly-edited transcript of the podcast episode:

Anthony:

Okay everyone. Welcome to the Law & Business Podcast. Anthony Verna here with our patent agent. Wil Jacques, how are you doing?

Wil:

Well, very good. Anthony, how are you this evening?

Anthony:

I’m doing well, thank you and hello to all the as well. Thank you for joining us and don’t forget to subscribe and rate if you’re listening on iTunes to the podcast today, we’re talking about a more traditional topic. It’s the provisional patent versus the full-blown patent application. And we’ve certainly had people call us and say, “I want a provisional patent.”

And generally I say to somebody, “Why do you want a provisional?” And usually the answer is, “I don’t know, doesn’t everybody get a provisional?” And the short answer is no. And you need to sort through some, some pros and some cons of the provisional patent application process versus just getting a full blown patent application.

Why don’t we start off with positive check mark or two for the provisional patent application.

Wil:

Well, just as you alluded to, a lot of our clients will come to us and suggest that they want a provisional patent when in fact what they’re asking for is a provisional application for patent, which is kind of different. You know, you know, the nuances are kind of thin for most of our clients. But just so that you know, there’s no such thing as a provisional patent. What there is, is a provisional application for the patent. But that provisional is important because if one is not absolutely sure about all of the, let’s call it modes of operation of a, of my invention or every little detail of my invention, what I may want to do is to get as broad coverage and as much disclosure about what my invention is that I have in my possession right now. And get that on paper and get that file you want to, you know, under first to file, you want to get that into the office and establish your date. So you timestamp.

Anthony:

A couple of things that you said there. One, because we’re in a first-to-file scheme now that started in 2013 for everybody out there who didn’t know that here in the United States first to file, you get to the patent office before anybody else. So number one, a provisional patent counts in a first to file scheme. So that’s one of our positives of that provisional patent application is we get our filing date. And another thing that I want to unpack a little bit is that you said that there’s a focus on disclosing the invention in its full detail. In the provisional patent application. You can prepare an exceptionally detailed application in a provisional patent application without going through the formality of a regular patent.

Wil:

There are quite a few formalities associated with the regular or what we call non-provisional patent application that are not in a provisional patent application. So one of those things would be the level of detail that one may go into. In terms of your full disclosure. It is not necessarily a requirement that you have drawings now. It is recommended that one has drawings in order to fully explain what the invention is. Sometimes you don’t capture it without the drawings, but these are certain formalities that may not be required in the filing of a provisional but still afford you the ability to get a timestamp and to get that date. And I’m sure we’ll talk about the caveats of why we, you know, some of the cons associated with this as well. Get to that. We’ll get to that, but certainly that’s, that’s one of the things you want, you want to be aware of. The one that matters the most is that in a provisional one does not even need to make a claim and that is what is it that I claim to be the invention buck. Don’t confuse it with saying it is not what I have disclosed in that application. It should be there and then you know as patent practitioners we can come back later and formalize the claims.

Anthony:

I don’t want to necessarily call this a a pro or a con, but when you still need to make sure as a, as a drafter of the patent application that that description of the invention is neither too narrow nor too broad as well. I mean there still is an art to drafting the provisional patent application because, and tell me if I’m wrong,

Wil:

If it’s too narrow, converting it to a full patent application is going to be different and difficult. Excuse me. And if it’s too broad, then maybe the examining attorney might not give you the filing date of the provisional application. It’s a fine line. And to some degree as to what is actually been disclosed, it’s typically not to the letter. It May, I think to use the term inference because we have to disclose fully and concise. Yes, clearly understood what our inventions are. But having said that, a molecule that has one spitting at them, it may be representative of a molecule that has multiple spinning atoms in, in a region, you know, and still you’ve disclosed the invention. However, there may be other claims to be made to capture all of the different elements of your invention as you write those claims. But you have this done your job of disclosing that what you may not have done is disclose the best mode of your invention, which is a requirement for your non-provisional and not a requirement for your provisional patent application. And understood. So I call that a positive, but I just wanted to say there still is an art to the provisional patent application. Uh, yes. Okay. So with the fact that that there are less formal requirement to the provisional patent application, I’m assuming the cost of a provisional patent application is going to be less than the cost in fees of a full, a non-provisional patent application. And then is that true for the patent and trademark office filing fees? Oh yes. Okay. I just wanted to make the distinction between the fees.

Anthony:

It depends on the approach of your practitioner.

Wil:

At Verna Law, we try to be as detailed as possible up front and so the cost of your, of your provisional application, depending on the budget of our client, could get too close to what it would be in a regular file application. But that provisional has been prepared to the extent, and I’ll use your term that it could be converted now it’s not recommended to convert. It’s, it’s recommended to Reno to really redraft, you’re not provisional and clean benefit, but you could save 50% or so. You know, let’s just throw out around number on your drafting fees because of the, the less requirements, less attention to too much detail. As far as the US PTO is concerned, your bees are much less as well. And most of that has to do with the fact that it is not examined. Generally speaking, Europe, your provisional application for patent is not examined by the u s PTO.

Anthony:

Now you’d said just said generally speaking, the patent and trademark office will not examine a provisional patent application. Can you name an exception?

Wil:

Well, yeah, yeah. And let’s say in your, in your regular uh, pattern, uh, app application, what we called a non-provisional patent application, you have made a, uh, a claim for the benefit, a written statement in your non provisional application claiming benefit of the priority date or the filing date of that provisional patent application. Then it, again, it is still not examined per se, but the provisional patent application does become available to for the public proceed. And so whether it’s examined or not and the invention is there, we’ve timestamped it, something’s going to get examined. But I think what our real concern is whether or not it’s still a quote unquote held in confidence between the inventor in the patent office.

Anthony:

Does that confidence go away? Is that provisional patent application ever published?

Wil:

No, it is not published, but there is access made to it. So typically after you file a regular patent application, 18 months after your priority date, that application is published. So it is made of public. Uh, they don’t necessarily publish your provisional application, but one has access to it through the files based on the fact that you were regular patent application has been published and you can see the number, therefore you have access to that provisional.

Anthony:

I think that’s an important distinction to make because I think a lot of people go into this process saying, well, I can file the provisional patent application and nobody’s ever going to find it.

Wil:

Well, the other thing, and that’s a true statement, let me say that first, but one thing that we tend not to think about a lot of our inventors more independent, some of the smaller vendors they come in, but they do see a need to want to file internationally. And so provisional applications for patents is strictly a u s function. It does not work the same way around the world. But because of our bars, let’s call it two to patent ability, one is given a certain amount of time in order to file your application in light of certain other, and we’ve talked about those on other shows, but in terms of having your foreign patenting rights preserved, you have to file within 12 months of your national filing in another country.

Anthony:

So if you file in the United States within 12 months, you have to file that invention in the most foreign countries.

Wil:

Right. And you need to check with your patent practitioner, your patent attorney in other jurisdictions to see how it’s calculated. Because frankly, it’s despite the treaties, it is different in every country. So how Canada treats your us provisional patent application is different than how France and to treat it and it’s different than how Japan is going to treat it and it’s different than how Korea is going to treat it. You just need to check with your practitioner in that jurisdiction. You know what we’ve done with our provisional patent applications is we provided an additional year of, quote-unquote patent protection to those filing.

Anthony:

Hey that’s, that’s another, that’s that is another pro. That is another positive check mark.

Wil:

At registration, you’ve got 20 years of, let’s call it quote unquote patent protection. However, because of that benefit, you do not get that in our foreign jurisdictions. And so the clock starts running at the point you filed that provisional patent application.

So I’d say one of the negative check marks for the provisional patent application is that if you’re going internationally, you need to make sure you understand your timing with counsel in each jurisdiction that you plan to file in because they’re going to calculate that provisional filing date differently. Right. And so, so you need to make sure that you understand this, so I’m going to guess that that’s a negative check mark. That is a, I hate to say pros and cons cause boy would have phrase, but anyway, that works. I know. I know. If we’re filing a provisional patent application, I understand that the, that the initial cost feels low, but in reality isn’t a going to be higher because it’s almost as if the inventor needs to pay twice because you’re going to be paying a second USPTO filing fee. You’re going to be paying your attorney or a practitioner multiple times because now you’re going to, you’re going to turn that provisional application into a non provisional application for the extra year of work or extra year of protection. It doesn’t seem like there’s a whole lot of benefit there with the number of extra fees but, it truly depends. Let’s take a look at the current environment. Maybe we even stepped back 20-25 years ago when everything was a sensor, so all manner of memes and sensors were being filed. You know, it may be, to use Steven Johnson’s term, the primordial soup, right? We’re talking about the minds getting together and inventions just kind of flying off the wall. And it’s funny that Oculus was quote unquote invented at the same time by two different people, but they hung together. And so the language was there. Having said that, this what happened during the censors and memes period is happening today, let’s say in AI or in crypto currencies and that’s another matter as to whether or not they’re patentable.

Right about now the environment is, these are the types of patents that are being filed all around the world and particularly at the USPTO. And so when the, I-have-an-idea person comes or the adventure comes to us, it may be that they’re in an environment that’s moving very quickly and they need to get something filed on the books. Now in order to at least attempt to preserve their patent ability position within this environment of my buddy at the University of Pennsylvania is working in the same area and I know they’re going to be filing.

And that brings up the next point, which is if I’m filing this this time sure, sure. But that brings up my next slide. If an inventor is filing a provisional patent application, that provisional patent application, as we said, uh, several times it has some kind of description of the invention. Um, and even if it’s a quick and dirty description of the invention, the, the way you were just talking about it goes hurry up, get it filed. Cause we have to get something on, you know, on the books. It’s, it’s not truly protection for the invention until this entire process is formalized anyway into a non-provisional patent, which sets forth the claims.

And so imagine that a lot of work on the side of the inventor may have been performed. And again, we, we, we recommend you sit and go what your, your patent, uh, practitioner to make a clear determination of this. But in adventure columns and they’ve done a white paper and they have experimental results and they can show tables and they can show other aspects of how the invention is working. They may even have photographs of, of the invention, maybe, you know, something that could at least not be a formalized drawing, but it could be a picture that kind of shows the shows the adventure, those things without going into a lot of formality could be the basis of your provisional, which is why they’re so inexpensive because of time is the issue. Then these things can kind of be put together and vile. In other cases, you may not want to do that, but it depends.

Anthony:

So if somebody is picking up the phone, calling their practitioner and saying, I want to provisional and I’m going to be stubborn about wanting provisional right now, what’s your advice for the right case for filing that provisional application?

Wil:

I need to get it done yesterday.

Anthony:

Okay.

Wil:

And that’s it is it in my mind is the only reason to file the provisional because one understands that it takes a little time to formally and get a patent application drafted properly. There’s a fair amount of back and forth that I actually recommend and should happen between the patent practitioner and the inventor. For instance, I’ve seen pattern, uh, pass list of c and applications that had been from inventors and it’s been, I’ll use the term elegant in that environment.

Where the invention could’ve gone. In other words, they want it to be too perfect about what it is they had discovered it. They ignore the broader impact theory is in such a way that they could have captured more. These are the things that come from sitting down and questioning and taking consideration of the invention.

You don’t have that time – we’re in the AI environment and you think that there are people who are getting close to what you’re doing.

Then let’s get the clock stay out in this. Just get something filed.

Anthony:

Why am I not just, why are we not just doing that for everybody? Because this way you get that you get that filing date

Wil:

Because one is still has the requirement of having maybe a distinct invention.

A disclosure of the invention and in order to properly construct claims, the specification or what we will just refer to the entire application as the disclosure, which could or may or may not include drawings, but it has to have fully describe what it is that your invention does, what it’s made of, how it works. It needs to be there.

Anthony:

There are some websites that say the provisional patent application is a really good idea. If you need to tell investors that you’ve something filed and this way the provisionals filed or you can say patent pending and this is a good way to talk to investors. I know you’ve got practical business experience and this will not, not, not just drafting patents experience. What’s your experience with that set of facts?

Wil:

Well, it used to be a lot easier. Yeah.

Anthony:

Well yes.  I know years ago you and I both know that that angel money and VC money isn’t what it used to be. Now we both know that, but at least an inventor can say, well the patent is pending.

Wil:

Yeah, well we can certainly talk about that, but that’s another show in itself as well.

Well let’s say this, there is a colleague of mine always use the term smart money and dumb money and there was a little bit more dumb money, at least with respect to reviewing the statement of I have past or I’ve filed for patents these days. It is well okay, but to some degree investors will want to know what is it that you filed. And so what becomes important is, let’s see, you come, you want to get the provisional file so you can have something inexpensive so that you could run to the nearest bank of crowd funding or other folks and say, yeah, I have a patent filed. Or you know, maybe you wind up on that tech show.

Anthony:

Okay,

Wil

I got a patent filed. Well, is a patent provisional? The first thing I look at is, well, what have you filed? Have you made a sufficient disclosure of the invention and something that’s going to protect what it is we’re trying to sell and prevent others from doing it. Right, because you can’t go back in, add new matter after defined.

Anthony:

Oh sure. And, and I was at a, at a startup convention a couple of years ago. I don’t, I’m sure we’ve talked about this story privately, but person owner of the company comes up to me and says, well yeah, I have a pen. I picked up the phone, I called the patent and trademark office and got an appointment with the attorney at the USPTO and I explained the intervention. And then somebody started infringing. Then I went to a lawyer and the, and the patent lawyer said, sorry this, the claims are so narrowly drafted that this other company is making a version of your invention that is not described in your patent and therefore there’s no infringement. So I get, and I know that you get that the embodiment is truly important and especially when you’re dealing with a full non-provisional patent.

Wil:

That is what we call enablement. And so though this is what the embodiments do, those are what the best mode is intended to do, is to say that I really have command, I really know what my invention is. And to be able to describe that in a way that someone who is as we use the term skilled in the art one who understands this technol technological space would be able to say, yeah, I get that. And that really, really does work. Now again, as we’ve said in previous shows, it doesn’t really matter in some respects that you have a patent in that piece of the patent world doesn’t provide you or provide your, your, your market with something substantial in terms of, of value. And the best way to think of it when, when we have our inventors come in is to say it patent doesn’t give you a right to sell anything.

Anthony:

That’s true. It gives you a right to restrict others. And so the mere fact that you may be able to get a patent on something and so you add a new laser clicker to your pen that is not part of other pens. But if there’s a pen that is patented that you need to go through in order to sell your product, then you are less, we say restricted. You don’t have a freedom to operate in that regard. And so you know, maybe your, your, your patent isn’t worth as much as what you thought it was. All right. So to to wrap up here, well the provisional, in your opinion, the provisional patent application really is for somebody who needs that filing date right away.

Wil:

And I hate to use this term, but I would also add that there may be other specifics around how one would describe other specifics around the invention that one may want to include in a regular application that you may not have at this point in time. A lot of people in fact used the provisionals is a very inexpensive way to be able to go out and see whether or not the invention does have value. So you can file, you can know that you have some protection in place that you can later on come and spend the real money, you know, or a larger sum of money in order to capture that. But you could test it in the market now to see whether or not what you have invented and what you hope to get a patent for that will restrict others. That’s a lot, isn’t it? Will in fact have value. But you’ve done that at, um, you reduce the risk of the amount of money you have to pay upfront.

Wil:

And other than that, sit down with your practitioner, go through the and, and, and get your claims. Absolutely. Okay. Well, thank you so much for spending another half hour. Thanks for the conversation.

Anthony:

All right, and once again, thanks for listening to the lawn business podcast and coming up. We have an episode on cryptocurrency in taxes as well as taxes and placing your IP and parent child, brother, sister subsidiaries, like a mind warmer. [inaudible] thankfully I don’t do taxes. All right, everyone, please don’t forget to rate and subscribe to the Law & Business Podcast. Thanks very much for being with us.