In the Race to the Patent Office, the Hare Beats the Tortoise

A provisional patent application is designed to provide a low cost initial patent filing in the United States. Provisional patent applications have become a popular way for applicants to secure early patent application filing dates for their inventions in the U.S. They have become widely used in rapidly evolving spheres of technology such as the Internet, telecommunications, software and biotechnology, although they are routinely used for all types of inventions. Currently, the U.S. government filing fee for a provisional application is $100.00 for individuals, non-profit organizations, universities and for-profit corporations of less than 500 employees, including affiliates (“small entities”) and $200.00 for for-profit corporations of 500 or more employees, including affiliates (“large entities”).

A provisional patent application provides a way to establish an early effective filing date for a later-filed non-provisional patent application, and it allows the term “Patent Pending” to be applied to goods or services covered by the provisional patent application disclosure. It also enables an applicant to use the one-year pendency of the provisional application to generate commercial interest in the technology disclosed in the application. It is important to understand, however, that provisional patent applications are not examined on their merits and become abandoned on the one year anniversary of their filing date. Consequently, a provisional patent application does not provide an inventor with any enforceable patent protection for the invention described in the application. To obtain formal patent protection for the invention and also claim priority to the provisional application’s effective filing date, the provisional application must be converted into a non-provisional patent application during the one-year pendency of the provisional application. Conversion of a provisional patent application into a non-provisional patent application usually involves considerable time, effort and cost.

Perhaps most importantly, the filing of a provisional patent application preserves an applicant’s right to seek foreign patent protection so long as the applicant files the provisional patent application before any public disclosure of the invention (i.e., before any public presentation, published scholarly or trade journal article, print or online advertisement, sale, etc.). Furthermore, under the Patent Reform Act of 2007 (“PRA”), which has broad support in both houses of the U.S. Congress and is likely to become law in the near future, the provisional patent application will take on even greater legal significance. Specifically, under the PRA the United States is expected to adopt the “absolute novelty” and “first-to-file” patent standards currently recognized in nearly every other country in the world. Under the doctrine of absolute novelty, no patent protection may be obtained for an invention if any public disclosure of the invention is made anywhere in the world prior to filing of a patent application (including a provisional patent application). Therefore, if the PRA is adopted, an applicant will ineligible for patent protection in the U.S. (and virtually everywhere else) if he or she discloses the invention anywhere in the world before filing a U.S. provisional (or non-provisional) patent application. And, under a first-to-file system, the party that files first is the automatic winner in a priority contest. Thus, if “first-to-file” and “absolute novelty” become law in the U.S., the hare not only wins the race to the Patent Office, but the “loose-lipped” tortoise that discloses an invention before filing a patent application is disqualified from the race altogether.

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