Not all patent applications are long and complicated descriptions of an invention. Utility patent applications are applications that are prepared in a certain format, examined, and issued as an enforceable patent. A provisional patent application, by contrast, may contain a description of an invention in any format as long as it contains a technical description of the invention. The costs of a provisional patent application are typically lower since it can be prepared much more quickly. As a result, attorney’s fees and filing costs for the U.S. Patent and Trademark Office are lower than for a utility patent.
A utility application has a defined format specified by the USPTO. The application is required to describe the claimed invention in sufficient detail that “one of ordinary skill in the art” can make and use the invention using content in the application. This application includes one or more sets of claims that provide the legal definition of the features and elements of the invention. This definition is used to determine if the invention is novel and unobvious by an examiner when a patent is issued and is used to determine whether a competing product infringes the patent.
A patent attorney takes skill and time to draft the description to include possible alternate implementations of the invention and to draft claims to provide protection as broad as possible using more generic terms that may be required to describe the invention. The value of an issued patent, in part, may be based upon how well a patent attorney performs these tasks. As such, drafting a patent application may take a significant amount of time that raises the fees paid to the patent attorney.
A provisional application also is required to describe the invention in sufficient detail that “one of ordinary skill in the art” can make and use the invention using content in the application. However, provisional patent applications may not necessarily include a set of claims. The provisional patent application also may not include all of the alternatives that are added to utility applications. In fact, a provisional patent application may include a PowerPoint presentation and/or a technical paper written by one or more of the inventors.
Many applicants will file a provisional application containing a presentation or technical paper shortly before these documents are published, presented, or released publicly in order to prevent this information from becoming prior art Prior art is a document or information in some form that is released publicly before an application is filed. If information is released publicly, it may become prior art and contain information that cannot be patentable. The provisional patent application dated prior to release of information, renders any information contained therein that becomes publicly available to not qualify as prior art used to determine if the invention is patentable. The date of filing becomes the priority date used to determine when the public release of information becomes “prior art.”
The only requirement of a provisional patent application is that a subsequent utility application be filed within one year from the provisional filing date. This later filed utility application may issue as a patent following the examination process applied to all patents. During this one-year time period between the filing of the provisional application and the utility application, additional details of the invention may be finalized and a complete utility application drafted. Applicants can also use this time to determine if the invention is viable both technically and commercially. As such, provisional patent applications can be a valuable tool for applicants if used judiciously.
Like everything else in life, these advantages come with potential downsides that must be avoided. As noted above, the provisional patent application must still describe the invention in sufficient detail that “one of ordinary skill in the art” can make and use the invention using content in the application. Inventors and their patent attorneys must ensure that this level of detail is met. A provisional application that does not satisfy this requirement may not provide the benefits that may be available.
Additionally, the provisional patent application provides the benefit of an earlier priority date only for the information that is included in the provisional patent application. Inventors and their patent attorneys may generate useful details between the filing of the provisional patent application and the utility application. If an applicant, however, wants an application to contain all possible material, a utility application is created. A provisional patent application then becomes superfluous.
Applicants may benefit from discussing the value of using a provisional patent application for an invention. A patent attorney should provide such a discussion and recommend of which application best meets your needs. When in doubt, ask questions until you are satisfied that you are pursuing the best option.