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?
- Part 2: Common Pitfalls with Provisional Patent Applications
- Doing Nothing Within One Year of Filing a Provisional Patent Application
- Paying Too Much for Provisionals – Failure to Claim Small or Micro Entity Status
- The “Provisionals are Cheaper than Non-Provisionals” Fallacy
- Failure to Provide Adequate Written Description
- Drawings: Not Enough and Lacking Substance
- Part 3: Good Uses for Provisional Patent Applications
Part 2: Common Pitfalls with Provisional Patent Applications
Doing Nothing Within One Year of Filing a Provisional Patent Application
The most common mistake made by inventors who have obtained a provisional patent is letting the one-year term on the provisional patent application lapse without having filed for a non-provisional patent application. If the inventor does not convert the provisional to or claim priority in a non-provisional application within one year of filing the provisional application, then the inventor loses rights to the priority date. This means the inventor is back at the place they would have been if the inventor had never filed a provisional in the first place.
Failing to file or convert to non-provisional patent application within one year can also result in unintended consequences with statutory bars. Consider this scenario:
- January 1st, 2018: An inventor files a provisional patent application for an invention.
- February 1st, 2018: Inventor discloses the invention to a group of potential investors.
- January 1st, 2019: Inventor does not file a non-provisional or convert the provisional into a non-provisional within the one-year period.
In this scenario, because the provisional patent application one-year had lapsed, the disclosure made on February 1st, 2018 will prevent the inventor from receiving a patent for the invention if the inventor does not file a non-provisional application on or before January 31st. Additionally, if any other person had independently filed an application for the exact same invention or otherwise published information about the invention to the public on or before January 1st, 2019, then the inventor would also be barred from receiving a patent for the invention. Allowing a provisional patent application to lapse can have serious consequences, and inventors should not take it lightly.
Paying Too Much for Provisionals – Failure to Claim Small or Micro Entity Status
Inventors should always consider their financial situation before making any filing at the USPTO. Inventors who file their own patent applications (including provisional patent applications) often pay the standard fee because inventors do not realize that they may qualify as a small or micro entity. An inventor may likely qualify as a small entity if the inventor meets the requirements, entitling the inventor to a 50% discount on most standard fees. Alternatively, the inventor may qualify as a micro entity if the inventor meets the additional requirements, entitling the inventor to a 75% discount on most standard fees.
The following table shows the three most common fees for filing a provisional patent application with each fee amount:
|Standard Fee||Small Entity Fee||Micro Entity Fee|
application filing fee
|1.16(g)||Surcharge – Failing
to pay the 1.16(d) fee at the time of filing or failing to provide the cover
sheet at filing
Application Size Fee – for each additional 50 sheets that exceeds 100 sheets
|This table is accurate as of March 2019. All current fees can be found at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule|
If an inventor qualifies for pro bono patent assistance through Georgia PATENTS or Tennessee PATENTS, the inventor will be entitled to micro entity status. Inventors with micro entity status do not pay the $280 standard fee for filing a provisional patent application; they pay the $70 micro entity fee for filing a provisional patent application. The $210 difference is significant for many under-resourced inventors.
The “Provisionals are Cheaper than Non-Provisionals” Fallacy
I often hear inventors say they filed a provisional patent application because a provisional patent application is cheaper to file than a non-provisional patent application. Although this technically true, non-provisional application fees will eventually have to be paid for the inventor to receive a patent.
Using the standard fee amounts, a non-provisional patent application costs at least $2,720 in fees, and filing a provisional patent application costs at least $280 in fees. The initial filing of a provisional patent application costs roughly 10% of a non-provisional patent application. However, an inventor must either: 1) claim priority of the provisional in a new non-provisional application; or 2) convert the provisional application to a non-provisional application. The inventor who claims priority of the provisional will pay at least $2,720 in additional fees, while the inventor who converts a provisional will pay at least $3,020 in additional fees due to the processing fee and late filing fee added on. The minimum total cost of a person who obtains a provisional patent application is greater than that of a person who does not obtain a provisional.
|Minimum Cost of Provisional Filing (Standard Fees)||Minimum Cost of Non-Provisional Filing (Standard Fees)||Minimum Total Cost (Standard Fees)|
|Inventor obtains a provisional, but abandons invention||$280||N/A||$280 + No Patent|
|Inventor obtains a provisional and converts to a non-provisional||$280||$3,020||$3,300|
|Inventor obtains a provisional and claims priority in a separately filed non-provisional||$280||$2,720||$3,000|
|Inventor who only files a non-provisional||N/A||$2,720||$2,720|
When it comes down to it, filing a provisional patent application results in greater expenses to the inventor than if the inventor would have initially filed a non-provisional patent application. For more information about the fees for filing provisional and non-provisional applications, see the fees section on Georgia PATENTS or Tennessee PATENTS websites.
Failure to Provide Adequate Written Description
Many inventors believe throwing half-a-page of text that vaguely describes how to make the invention is good enough for a provisional patent application, but that is not the case. One of the most common mistakes inventors make when filing a provisional patent application is not broadly disclosing their invention to enable another person to make and use the invention.
If an inventor does not broadly disclose his/her invention, the inventor will likely have to add additional information about the invention when the inventor submits a non-provisional patent application. Remember, information not found in the provisional application will have a different priority date than the information in the provisional patent application. Having multiple priority dates may complicate examination of the non-provisional patent application. This means failing to broadly disclose could result in a more difficult examination of the non-provisional patent application, which may increase the total amount of attorney’s fees and/or prosecution fees paid.
Failing to broadly disclose the invention can also result in unintended consequences with statutory bars. Consider this scenario:
- If an inventor discloses elements A, B, and C sufficiently in the provisional, but fails to mention or does not sufficiently mention elements D, E, and F.
- Inventor, with a false sense of security that the provisional will protect their priority, discloses elements A, B, C, D, E, and F to a group of potential investors.
In this scenario, the inventor may be prevented from receiving a patent covering elements D, E, and F because those elements were disclosed to others, but not disclosed by the writings in the provisional patent application. Only the elements in the provisional patent application will be protected if they are disclosed to others. Further, if elements D, E, and F are necessary elements to the invention, the disclosure might prevent the entire invention from being patented.
In addition to broad disclosure, the inventor must sufficiently disclose information about the invention that would enable a person having ordinary skill in the art to make and use the invention. To know whether the document sufficiently permits another to make and use the invention, the inventor should ask themselves whether a person skilled in the art would have to do an undue amount of experimentation to figure out how to make or use the invention. If a person skilled in the art cannot make or use the invention after reading an application, the inventor likely needs to add more information to complete the application.
One way an inventor can add more information to their provisional patent application is to add drawings that specifically point out how an element of the invention work with the other elements in the invention.
Drawings: Not Enough and Lacking Substance
As the saying goes, “a picture is worth a thousand words;” but in the world of patents, a picture may be worth even more. As previously stated, drawings may be a great way to show persons skilled in the art how to make and use your invention. Unfortunately, many inventors do not create drawings that will be helpful to the patent examiner(s). Drawings should be incredibly detailed. If the invention is a physical object, show it from different angles, point out important parts, and show more than one embodiment of your invention in drawings. If your invention is a process, draw a flow chart of how the process can be performed. If your invention is a chemical, draw the chemical structure. If everything is done correctly, the inventor should have a series of images that clearly describe the invention.
Continue Reading in Part 3: Good Uses for Provisional Patent Applications
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.