The Problem With Provisionals: Part 1

Written By Zach Stevenson, Esq. – A Fellow at Georgia Lawyers for the Arts and Georgia PATENTS. Zach Stevenson is licensed to practice in the State of Georgia and the United States Patent and Trademark Office.

One of the most common misunderstandings I encounter when discussing patent law is with provisional patent applications. Almost every inventor is determined that he or she must get a provisional patent. Unfortunately, some clients will throw away time, effort, and money by not utilizing provisional patent applications correctly. In this 3-part article, I hope to better explain the purpose, common problems, and best strategies to utilize provisional patent applications.

Part 1: What is a Provisional Patent Application?

Understanding the United States Patent System

To understand provisional patent applications, you first have to understand how the United States patent system works. The United States has a First Inventor to File patent system, which means an inventor needs to be the first person to file a patent application for an invention to receive a granted patent. For example, consider the following scenario:

January 1, 2018: Inventor Adam invented a widget.
March 1, 2018: Inventor Bob also invented the same widget (without knowledge of inventor Adam’s widget).
May 1, 2018: Inventor Bob files a patent application for the widget.
May 2, 2018: Inventor Adam files a patent application for the widget.

In this scenario, inventor Bob will have priority to the patent because he was the first inventor to file the patent application. It does not matter that inventor Adam was the first to invent the widget because he failed to file his invention before other persons. Inventor Bob will have priority over inventor Adam to the resulting patent.

Priority is important because one of the requirements for obtaining a patent is that the invention must be Novel. At the United States Patent & Trademark Office, novelty does not mean “new,” novelty means “first.” This typically means that if a person has filed a patent application or otherwise made an invention available to the public, no other person can receive a patent for the same invention.

Think of priority like standing in a line at an imaginary food truck. The imaginary food truck will not make the same dish twice. The imaginary food truck takes orders as soon as you get in line (you have to know what food/invention you want to order/submit). At the end of the line, the chef reviews what you ordered and tells you whether he can make that dish for you. However, if the chef has already made the dish at the time you hand the chef your order, the chef will refuse to make the dish for you. Any person who has stood in line before you may affect your ability to get the dish. The sooner you get in line, the more likely you are going to get the dish you want to eat.

Provisional Patent Applications Explained

To establish priority, the inventor must file either a provisional or non-provisional patent application. Provisional patent applications only conditionally establish priority. Priority for a provisional patent application is only granted if the provisional patent application is converted into a non-provisional filing within one year. Additionally, priority is only granted over the information disclosed in the provisional patent application. Any information not originally provided in a provisional patent application, including new or changed information, but later provided in the non-provisional patent application will have the priority date of the non-provisional patent application, not the provisional patent application.

Going back to the food truck analogy, filing a provisional patent application is like ordering your dish and then paying some random person to hold your place in line for one year. Some people use the one-year period to look at other food trucks to get ideas of how to modify their order (continue inventing), some people try to sell your place in line (sell the rights to any patent), and some people do nothing. However, if you do not come back and stand in line within one year, the random person standing-in for you will get out of line and pocket your money. This example demonstrates the requirement for a person to convert their provisional patent application to a non-provisional patent application within one year.

What happens when you decide you want fries with your food order (you have additional inventive material) before you get back in line within one year? Consider this timeline:

January 1^st, 2018: You place an order for a hamburger. You hire a person to stand in the line for you for one year to allow you to do other things.
Between January and August: You see if anything else sounds delicious that you might want to order (continue inventing). In this period, you decide that adding fries to your order would make your meal more enjoyable.
August 15^th, 2018: When you go reclaim your spot in the line, you add fries to your order. There are now many people standing in line behind you.

At a much later date, the chef reviews your order and notices you ordered a hamburger on January 1^st, 2018 and you modified your order to add fries on August 15^th, 2018. The chef wants to be fair to all the people standing in line, so the only way the chef will make your modified order is if no other person had ordered a burger before January 1^st, 2018 and no other person had ordered fries before August 15^th, 2018. This example shows how you can have two different priority dates as a result of adding more information when you convert your provisional to a non-provisional application.

So, what is a provisional patent application? To overly simplify, it is the right to hold your place in line for a year. Having a provisional application number is no more valuable than taking a number at your local deli or bakery. To Jerry Seinfeld, getting ahead in line may have been valuable; to others, probably not. A provisional patent application allows the inventor to begin marking the product with the words “patent pending,” which may be good if the inventor is searching for investors, selling their product, or disclosing information about the product to others.

Converting to or Claiming Priority in a Non-Provisional Application

There are two ways gain the benefit of provisional application, either 1) claim priority to the provisional in a new non-provisional application or 2) convert the provisional application to a non-provisional application.

The inventor can claim priority to a provisional application by filing a complete non-provisional application and reference the application number assigned to the provisional application.

To convert an application, the inventor must inform the patent office they wish to turn the provisional application into a non-provisional application and provide all the additional requirements and fees to complete the application. Beware that converting an application, instead of filing a new non-provisional, will result in additional fees and a limited patent term.

Provisional Patent Applications Must Become Utility Patent Applications

To benefit from the priority date of the provisional patent application, an inventor must convert or claim priority to a provisional patent application in a subsequent non-provisional utility patent application. An inventor cannot directly convert or claim priority to a provisional patent application in a design or plant patent application.

It is possible for an inventor to indirectly claim priority to a provisional patent application in design patent application. To do this, the inventor must first file or convert the provisional to a non-provisional utility patent application, then the inventor would file a divisional application for a design. Divisional applications are used to obtain patents when the filed application contains many different inventions. Divisional applications obtain the earliest priority date of a non-provisional application as long as the contents of the divisional had been disclosed. This allows for an inventor to file a design patent application with the priority of the provisional patent application.

Requirements for Filing a Provisional Patent Application

Inventors like provisional patent applications because there are fewer filing requirements than a non-provisional patent application. Technically, there are only four things required to file a provisional patent application:

a cover sheet (which can be downloaded from the USPTO – Form PTO/SB/16);
written description which meets the requirements of 35 U.S.C. §112(a);
any drawings necessary to understand the invention; and
a filing fee.

As you will see in the common pitfalls section, these four items may be more complicated than it would initially seem.

Continue Reading in Part 2: Common Pitfalls with Provisional Patents

If you are a Georgia, South Carolina, or Tennessee inventor still interested in seeking assistance filing a provisional or non-provisional patent application after reading this article, please feel reach out to Georgia PATENTS and Tennessee PATENTS to see if you qualify for patent pro bono legal services.