Stricter Standards for Provisional Patent Applications

Published February 27, 2014

Provisional patent applications offer a relatively inexpensive way for applicants to secure an early filing date for potentially patentable subject matter.

Recent law changes and court rulings have caused provisional applications to come under greater scrutiny during examination of related non-provisional or PCT applications.

They also provide a one-year window during which the technology and its commercial potential can be further explored before making the investment in a far more costly non-provisional or PCT application.  However, recent law changes and court rulings have caused provisional applications to come under greater scrutiny during examination of related non-provisional or PCT applications.  In order to meet these stricter standards, technology transfer offices (TTOs), including UB STOR, have been forced to modify their practices.

Although provisional applications have no specific formatting requirements, including no stipulation that they include claims, they must still meet the basic requirements of 35 U.S. Code § 112.  That is, they must describe the subject matter in such a way that would enable someone of ordinary skill in the art to make and use it, including the best mode for doing so.  If the description in the provisional application is incomplete or does not adequately describe the breadth of the subject matter one hopes to secure claim coverage for, the cost and time spent preparing the provisional application may have been wasted.  It can also lead to increased costs going forward since there is an increased risk for having to draft arguments in an attempt to overcome examiner rejections related to the inadequate description.

Provisional Patent Applications:  A review

  • Establish an early filing date
  • Are not reviewed or examined, unless a non-provisional or PCT application is filed claiming priority to it
  • Expire after 1 year
  • Do not mature into a non-provisional patent application
  • Do not trigger the 20-year patent term
  • Only cover what is described

Because provisional applications are not reviewed on their own, these requirements come into play during examination of a related non-provisional or PCT application.  In order for a non-provisional or PCT application to benefit from the earlier provisional filing date, the provisional application must satisfy these requirements for each element and limitation of the later claimed subject matter.  Any elements or limitations that are not fully supported by the provisional application will not be afforded the earlier filing date.  Instead, the filing date of the PCT or non-provisional application will be used as the priority date.  The risk here is that the later priority date allows up to an additional year’s worth of patent and non-patent literature to be reviewed by a patent examiner when considering the patentability of the claimed subject matter.  Compared to the past, examiners are now paying much closer attention to provisional applications during their review of related non-provisional or PCT applications.

The U.S. Patent and Trademark Office’s adoption of a first-to-file system under the America Invents Act (AIA) only complicates the situation.  Under the AIA first-to-file rules, it is no longer possible to overcome prior art simply by “swearing behind” such references by showing an earlier date of invention.  In order to secure a patent, you must have filed first.

The “blue” area in the figure above represents the invention described in a provisional patent application filed on 1/1/14.  One year later, on 12/31/14, a non-provisional application is filed with new aspects of the invention added and represented by the “green” area.  Only the blue has the benefit of the earlier filing date.  In the US, any third party publications made during the 1-year provisional period may be cited by the examiner against the green.  Internationally, the inventor’s own publications during that 1-year period may also be cited against him/her.

In the past, it was not uncommon for technology transfer offices (TTOs) to simply attach a cover sheet to presentation materials (e.g. slide deck) or technical manuscripts and file them as “cover sheet provisionals”, especially when little advance notice was provided.  In light of the above, it’s easy to see that these filings likely provided applicants with a false sense of security since slide decks are typically insufficiently descriptive and manuscripts do not fully describe the potential breadth of the later claimed invention.  STOR will work with inventors to include as much of the green in the provisional filing as possible, provided it meets the enablement and best mode requirements.

To avoid the potential trap of viewing provisional applications as a simple mechanism for claiming a priority date and to better prepare for the eventual scrutiny that these applications will face, TTOs have generally been adopting a two-pronged strategy for provisional applications.

  • First, only robust, high quality provisional applications will be filed.  TTOs, including STOR, are now avoiding the filing of cover sheet provisional applications since they tend to afford little, if any, protection for the later claimed invention.  This will require that researchers disclose potentially patentable subject matter to STOR well in advance of any planned publications or presentations.  This also requires greater participation on the part of the researchers at a much earlier stage than in the past.   Although the time and effort to prepare a quality provisional application is approaching that which is required for a non-provisional or PCT application, it is important that the subject matter be fully described and that points of novelty are clearly pointed out.  It is also important to describe alternative embodiments, especially those that might have commercial value.
  • Second, greater consideration is being given to filing additional provisional applications as the invention evolves and new data is generated over the course of the year.  Because an application only covers what it describes, it is important for researchers to inform STOR of new developments even after a provisional is filed.  A later filed application can claim priority to multiple provisional applications.

Although the adoption of this strategy does not guarantee that a decision will be made to “convert” the provisional application(s) into a non-provisional or PCT application – strength of patent coverage, commercial potential, licensing interest and stage of development are still important considerations - it does position us well in the event that we need or desire to claim priority to such application(s).