Provisional Patent Application: Its Life Does Not Begin at Conception

R. Joseph Trojan, Trojan Law Offices
Consider this scenario. Your company is developing a revolutionary new robotic tool for arthroscopic surgery. Because of the large potential market, there has never been a shortage of eager investors for this project. However, you are well aware of the competition in this field. In fact, one particular company, Quick & Clever Ortho, Inc., gives you the most worry.

From the press releases you suspect that Quick & Clever is developing a similar technology. This worries your investors as well. You are constantly getting calls inquiring whether the results are good enough for a patent. Of course, you also are eager to file a patent application. However, not all the details of the tool have been worked out. You feel uneasy about including preliminary data in a patent application. Should you file a half-baked application that will be rejected or issue as a weak patent? Should you wait and risk losing it all to Quick & Clever? 

Fortunately, there is a solution for inventors who, like you, are in a race for priority but need additional time to perfect the invention. The United States, like most countries, allows the filing of a provisional patent application instead of a regular non-provisional application. Provisional applications are not examined but merely “stake a claim” and give the applicant a year to smooth out the details of the invention. A provisional has a much simpler format than a non-provisional application. Such applications can be drafted easily and inexpensively. Often a paper from a scientific journal is submitted as a provisional patent application. 

A provisional application expires in one year. Then the applicant must decide whether the invention is still worth the expense of a regular non-provisional application. The latter would claim the earlier priority date of the provisional application. If the invention is not ready even after one year, the connection to the provisional application will be lost. When the non-provisional is at last filed, it will no longer use the earlier date as the date of invention.

Clearly, a provisional application is an attractive solution that fends off competition for a year and gives the applicant time to perfect the invention. An unfortunate but common scenario involves a patent that relies on preliminary results. The law does not allow for any substantive amendments to the application after it has been filed. As a result, the patent memorializes the earlier, premature device and not the optimal version that everyone in the industry wants to use. Then the patent is useless, because there are no infringers. Or worse, the device as described in a patent doesn’t really work without the optimizations, making the patent altogether invalid. Although a shrewd inventor often objects to the extra cost of a provisional application, the prospect of ending up without a patent makes the investment worthwhile.

Timing Issues

Can one be too early even with a provisional application? In general, the law recognizes two steps of the inventive process: conception and reduction to practice. An invention is complete when it is reduced to practice—ie,  it credibly does what it purports to do. If an invention is merely conceived but has not been shown to work, a provisional application will not help beat a competitor.

In our scenario, Quick & Clever may have a competing application. The company would challenge the date of your provisional application as the supposed date of invention. The Patent Office would check whether your provisional application describes a working device. If not, your subsequent non-provisional application would lose the earlier priority date and be pushed forward by one year. This may allow Quick & Clever’s application to win the priority contest. A quick rule, therefore, states that a provisional application may be filed only when the invention is complete but not all the details have been smoothed out. A mere conception of the invention is not enough.

Of course, by delaying the filing by another year, the inventor delays the issuance of his or her patent. During that year, however, one may still enter into contracts promising assignment or licensing of the future patent, but not pursue infringers. The life of a patent (17 years from issue) is not shortened by the provisional application. The entire period simply shifts forward by one year.

For simple inventions ready for immediate sale, this strategy is of no benefit. The one-year delay at the beginning delays the income from royalties.  As for the 17-year period ending one year later, the simple invention will likely become obsolete long before that.

On the contrary, provisional applications are very attractive for products that are not yet ready for the consumer. Drugs and medical devices are a perfect example. Even after the patent issues, nothing can be sold until the FDA review is complete. Thus, the one-year delay with getting the patent causes no harm. At the same time, towards the end of the patent term the drug or device may be finally enjoying great popularity. Postponing the expiration of the patent by a year will bring substantial additional income.

Protecting Inventions Overseas

A final note concerns international rights. Under the Patent Cooperation Treaty (PCT), an inventor is able to file a single application with an option to cover up to 123 countries. The PCT application must be filed within one year of the first national filing. Experienced inventors usually know that one files a non-provisional application and, in a year, follows up with a PCT.

It is very important to remember that a provisional application changes this sequence. A provisional is considered a first filing. Therefore, after one year the inventor must file both a non-provisional and a PCT application at the same time—there is no longer a grace period between them. The grace period has been used up by the provisional.

Because PCT applications are very costly, one may file just a PCT application at the one-year mark. The United States will then be added to the list of countries where the PCT patent will be requested. Overall, this route is more costly than directly filing the US non-provisional and takes 18 months or longer, so the costs are spread in time.

Coming back to the original scenario, the company manager beset by worried investors and competition from Quick & Clever should call his patent attorney right away. Perhaps at least a provisional patent application can be filed. If some details of the device still need to be worked out, the provisional may indeed be the best option. If the FDA approval is not expected within the next three years, the delay due to the provisional application will not eat into the royalties from sales. Finally, since the provisional application starts the clock on the one-year PCT deadline, the manager should let the attorney know whether he wants international protection.