Provisional Patent Part II – Some Things to Be Aware Of
There are a number of things a small business needs to know about provisional patent applications. Too
many applicants have assumed that they can take full advantage of the less
exacting requirements of provisional applications and quickly file what some call
a "skimpy" provisional. A real issue here is the possibility that the
description of the invention is insufficient to support the eventual claims
that may accompany a non-provisional application. Thus two filing
dates may be assigned: one for the incomplete provisional, and another for the
added material that was necessary to complete the disclosure. This may lead to
losing foreign filing rights and/or invalidating the US patent, dependent on
the exact timeline.
important consideration is that the although a claim is not required in a
provisional patent application, the written description and any drawing(s) of
the provisional patent application must adequately support the subject matter
claimed in the later-filed non-provisional application in order for the
later-filed non-provisional application to benefit from the earlier application
means that great care should be taken to ensure that the disclosure filed in
the first application adequately provides a written description of the full
scope of the subject matter regarded as the invention and desired to be claimed
in the later filed non-provisional application.
A related issue with small businesses is to misunderstand what rights are conferred by a provisional patent application. The applicant may have the mistaken belief
that they are fully protected by an provisional patent application. There is a reason we keep calling it a provisional patent application. It is an application - it never becomes a patent. Their marketing
program may begin to tell potential customers about the new development, they
may begin shopping the idea around for licensing, or they begin strategizing
how they can exercise the patent against a competitor. The applicant begins to
act like they have patent protection that they can rely on.
Provisional Patent Applications - Other Issues
There is no requirement that the written
description and any drawings filed in the provisional patent application and a
later-filed application be identical, however, the later-filed application is
only entitled to the benefit of the common subject matter disclosed in the
corresponding non-provisional application filed not later than 12 months after
the provisional patent application filing date.
A good patent practitioner will ensure that
the specification written for the provisional patent application complies with
35 U.S.C 112 so that the specification discloses the manner and process of
making and using the invention, in such full, clear, concise and exact terms as
to enable any person skilled in the art to which the invention pertains to make
and use the invention and set forth the best mode contemplated for carrying out
the invention. That's right out of 35 U.S.C. § 112, 1st paragraph.