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.

An 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 filing date. 

This 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.

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