By R. Brian Drozd, Moore & Van Allen

Brian Drozd

Many companies, especially companies trying to save money, file provisional patent applications to protect inventions. Provisional patent applications differ from regular patents applications because they do not mature into an actual patent unless a patent application (commonly referred to as a “non-provisional” application) is filed within one year claiming priority to the provisional application.

Benefits:
First, the U.S. Patent and Trademark Office (“PTO”) filing fee of a provisional application is relatively low: only $110 for a small entity (i.e. a company with less than 500 employees) or $220 for a large entity. The PTO filing fees for a non-provisional application generally range between $450 and $2,000 (depending on the size of your company and claims made in your application).

Second, the requirements for a provisional application are much easier to meet than a regular patent application. In order to obtain a filing date, all that is needed in a provisional application is a coversheet, the PTO filing fee and a specification. Accordingly, preparation and filing of a provisional application is a simple and quick process for patent attorneys, which greatly reduce attorney’s fees.

Third, the filing of a provisional application affords patent protection for an added year before filing a non-provisional application, effectively extending the normal 20 year patent term to 21 years.

Fourth, the filing of a provisional application can be used to satisfy the U.S. requirement that a patent application must be filed within one year of publication, first public use or offer for sale of an invention.  Thus, if one of these activities is imminent, then filing a provisional application is the typical way to go since there is not much time to prepare and file a non-provisional application.

Fifth, the filing of a provisional application enables the applicant to claim patent pending status on its products.

Sixth, the timely filing of a provisional application preserves U.S. and foreign patent filing rights.

Considerations:
In order to retain the priority benefit of the filing date of a provisional application, a regular non-provisional patent application (and if foreign rights are contemplated, any foreign applications) must be filed within one year of the filing of the provisional application and must claim priority based on the provisional patent application.

It is also important to keep in mind that provisional applications are generally held confidential by the PTO, which many companies prefer due to the sensitive nature of the subject matter.  However if the applicant decides to file foreign patent applications claiming priority to the provisional application, the provisional application will be published 18 months from the filing date of the provisional application.  Likewise, once a U.S. non-provisional application (claiming priority to the provisional application) has been pending for 12 months or has issued, the provisional application will be published.

As another filing consideration, filing a provisional application delays when examination will commence, effectively delaying when the patent will eventually issue.  Some companies view this as a negative if their technology is quickly-changing, such as software, cell phones, etc.  Quickly-issued patents are key to protecting technology that is changing rapidly in the marketplace. On the other hand, some companies actually prefer to have a patent pending as long as possible so that potential infringers will not immediately know how broad the issued patent will eventually be and so the potential infringers cannot actively design around a patent application since the patent claims have yet to issue.

Another filing consideration is litigation, as provisional applications are discoverable during a lawsuit.   This makes provisional applications a potential litigation exposure because it is possible to attack the scope of an issued patent based on the differences in language between the provisional application and the non-provisional application. Many conclude that a non-provisional application should have the exact same language as the provisional application and, at that point, it may be better in the long run to file the non-provisional application rather than the provisional application.

In conclusion, the decision regarding filing a provisional application will be based on costs, timing and confidentiality of the invention. Additionally, a company should take into account non-patent business factors that are normally associated with putting a new product on the market.

Brian Drozd is an associate in the Charlotte office of Moore & Van Allen. Mr. Drozd concentrates his practice in intellectual property with a focus on patent preparation and prosecution.

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