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Reasons for filing a US provisional patent application

US patent attorney Larry M. Goldstein takes a closer look at provisional protection of technical innovation

Introduction

In a first article, I discussed a US provisional patent application (“PPA”). I explained what it is, and how it differs from an ordinary patent application, which is known as the “non-provisional patent application” (“NPA”). In this article, I will discuss some of the reasons why it makes sense to consider filing a PPA rather than an NPA.

(1) First Reason – Time to explore alliances:

In many cases, particularly with solo inventors or small companies, time is required to determine whether an idea is truly viable economically. Can an invention attract investors, partners, suppliers, customers? Inventors do not wish to invest significant time or money until they are recently certain they can obtain backing. A PPA gives inventors time to explore options, before heavy investments of time or money in patents.

(2) Second Reason – Greatly reduced cost:

In every patent application, the main cost is the time and attention devoted by the attorney to the application. This is true even if the applicant merely wants the attorney to be available for consultation rather than drafting of the application. Other costs, such as a draftsman’s fee to produce figures compliant the rules, back office costs to prepare all accompanying documents, and the filing fee, can be significant, but typically are less even as a group than the cost of attorney involvement.

Attorney cost can be greatly reduced with a PPA. This is particularly valuable for a startup company that is devoting its time and attention to R&D rather than to patents. There are no formal requirements for a US PPA, no rules about which sections must appear, no rules about element numbers in figures, no rules about claims. In fact, the PPA may be filed in any language, even in more than one language, and English is not required.1 Therefore, in many cases the applicant can write much of the PPA, at least as a first draft.2 This greatly reduces total cost.

Further, there are typically no draftsman’s fees, since compliance with rules is not required. Back office fees are minimal, or even zero of applicants file by themselves. Finally, government filing fee for a PPA is about 20% of the fee for filing an NPA. In short, a US NPA that might cost $10,000-$12,000 to prepare and file, could easily cost $3,000-$4,000, or even less, if filed as a PPA.


1  However, in order to file an NPA with priority of filing date back to the time of the PPA, the applicant must file, in addition to the English language NPA, a translation of the PPA into English, together with a written statement, again in English, that the translation is accurate. Other strategies may be employed with non-English applications, but claim to early priority requires timely submission of a translation.

2  As I explain in my book, Provisional Patent Applications: Use and Abuse (2017), a draft PPA prepared by an applicant should always be reviewed, and least briefly, by a patent attorney.

(3) Third Reason – Speed of filing:

As anyone with patent experience understands, it takes a long time, weeks or even months, to prepare an outstanding patent application. But that is true for an NPA, much less true for a PPA. The essence of the PPA is to capture a concept an inventive concept, in all currently existing and currently contemplatable embodiments. That can be done relatively quickly, in some cases with a day, often on pre-existing documents such as product white papers, corporate road maps, or formal presentations. To be clear, it is not sufficient to simply add a cover page and file these documents. There must be review, there must be reworking, the key terms must be clearly explained. Nevertheless, all of this typically takes far less time with a PPA than the effort and time to prepare and file a formal NPA.

(4) Fourth Reason – Flexibility in filings:

Since there are almost no rules for PPAs, an applicant is free to do whatever seems to make sense, without restriction. It is very common, for example, to file a series of PPAs, in which each successive PPA embodies additional technical discoveries made since the immediately prior PPA. That is, PPA1 is filed on date X, PPA2 on date X + Y, PPA 3 on date X + Y + Z, etc. Then, when the NPA is filed, it incorporates, and relies for priority on all of these PPAs.1 Although a similar thing might be done with NPAs, the time and expense of complying with rules makes such an effort much more difficult.


1  It is the rule, however, that all of PPAs must have been filed within one year of the filing date of the NPA. If that date is missed, if say for example the NPA is filed within one year of PPA2 and PPA3 only, then the NPA may rely on those provisional applications for priority, but the NPA may not rely on PPA1 filed more than one year prior to the NPA.

(5) Fifth Reason – Acceptance throughout the world:

A PPA is a patent application in every respect. Some jurisdictions require an “application,” any application, to include at least one formal patent claim in a correct format, but if that requirement is observed, the PPA is valid throughout the world. An applicant may therefore file an ordinary application, with priority back to the PPA, in any country that is a member of the Patent Cooperation Treaty, within one year of the date of the PPA. Currently over 75% of the nations of the world are members of the PCT, including all countries in North America, Europe, and Australasia, and most of the countries in each of South American, Africa, and Asia. Hence, this also is a reason to file a PPA.

CONCLUSION:

There are additional reasons one might file a PPA, but these five are the essence. In appropriate cases, it is best for high-tech clients to file PPAs rather than NPAs. A good attorney will understand both tools, and when to use each one.

by Larry M. Goldstein, 16 January 2019