Patent Stats: Abandoning Provisional Patent Applications

By Dennis Crouch

Provisional patent applications have become the primary initial-filing for US-based patent applicants. In FY2011, more than 150,000 provisional patent applications were filed in the US. In order to take advantage of a provisional application’s priority date, the patent applicant must take action within one year to file either a non-provisional patent application or an international patent application (PCT).

A provisional application that is abandoned without being relied upon for priority is kept secret from the USPTO and never published or distributed publicly. Thus, it is somewhat difficult to study these “failed” patent applications.

In a FOIA request, I asked the USPTO for information regarding the reliance on provisional applications for priority. The results are not surprising – a substantial number (around 41%) are abandoned without being relied upon for priority. Thus, from FY2000-FY2010, about 1.2 million provisional patent applications were filed and, of those, about 500,000 were abandoned. The percentage of applications abandoned has grown somewhat in recent years. As the chart shows below, in FY2010 (the last year for which abandonment data is available) about 48% of provisional filings were abandoned without being relied upon as priority documents.

In my Michigan (MTTLR) article, I suggested that provisional applications have increasingly been serving as a more reliable substitute to the one-year pre-filing grace period available under 35 U.S.C. § 102(b). These figures lead to the additional potential conclusion that applicants are filing provisional applications at a very early stage in the patenting process, and the one-year timeline is being aggressively used as a decision-point.

Note: An applicant can “convert” a provisional to a non-provisional application within the one-year deadline. A relatively small number of applicants use this conversion procedure (< .1%) and so, for the purposes of this post, I have simply included the converted cases with totals for those with non-provisional priority claims.

36 thoughts on “Patent Stats: Abandoning Provisional Patent Applications

  1. I’m sure I have no idea what you mean

    I am sure you have every idea of what I mean.

    This is a blog, typos (especially ones easily recognized) are only highlighted in response by those who have nothing better to say, or by those who have nothing meaningful to add.

    May your holidays be joyous.

  2. I’m sure I have no idea what you mean, except that I suspect you intend “than” rather than “then,” and “recklessly” rather than “wrecklessly.” The latter is a fascinating new word, however.

    Merry Christmas to you as well, Lost Causes!

  3. In context, gentlemen, in context.

    The phrase, when aptly used in appropriate scientific contexts, is vastly different then when wrecklessly wielded in the patent law arena.

  4. Since they are the “only” ones who point out that a correlation is not a cause, could Lost Causes kindly define his “pure anti-patentists”? His definition will need to embrace all reputable scientists of course.

  5. The whole “correlation/causation” argument is only used by pure anti-patentists.

    You might as well try to extinguish capitalism while you are at it.

  6. Those patent lawyers that Beaker mentions, they presumably also counsel their clients against speaking English, for there is a strong correlation between speaking English and dying of heart disease.

  7. That assertion is wrong and mindlessly parroted by patent lawyers who have never bothered to research the subject. Correlation does not necessarily mean causation.

  8. Shilling, my post was in reply to that of AC, who wrote:

    “..first to file causes you to rush and as we were all told by our granmas: haste makes waste.”

    If you rush, and file before you have enabled over the scope of the claim, FtF is your own funeral and nobody else’s. As to “waste”, those 48% abandoned pro’s are wasted but the waste is of nobody’s time or money except that of the applicant. What’s so wrong with all of this.

    If AC trumpets to us all that the public interest lies in reverting to FtI, why can’t I offer my opposite opinion, that the public is better off with FtF, without you immediately shrieking “Shill”?

  9. Let’s not spend any more time bemoaning the two realities:
    (1) “First to invent” is not coming back. {But it will gradually drag on for another 22 years until finally petering out after all pre-AIA-filed patents are gone.]
    (2) the second to file on substantially the same invention rarely wins valid patent claims anyway, unless they had a prior “actual reduction to practice.” [And if they had an actual reduction to practice they should normally have had ample time, and sufficient enablement detail, to file a patent applcation by then. Prior conception alone cannot win, and must be before the other’s invention date, not just their filing date, and continuous diligence for a delayed filing is not often successful for any significant time period.

    Its the new instantanious AIA bars that will be the real change.

  10. Bad joke ahead, actually, a provisional application that has a written description of the invention may be sufficient under a first to invent system to prove priority over prior art. But an application that has only the written description of the invention, but no written description of how to make the invention, may not be sufficient to accord a filing date. Full section 112, paragraph 1 support is required for an effective filing date. However, I do not think the same is true with respect to evidence of prior invention, at least where one is only trying to remove prior art.

  11. I do not think that you an ascertain that statistic since a provisional (even a a second or serial provisional cannot claim priority to anything.

    More to the point, you wouldn’t want to claim priority in that case, because the whole point is to start the one-year clock over again.

  12. I FULLY agree. I’ve done a lot of university work, and the writers of these papers often ASSume that everyone knows how to make and use everything, including the invention. There’s often VERY little discussion of how to MAKE the invention, just how it’s used and data as to the results.

    If you ever have a university case in suit, ALWAYS look check for support in the provisional because it’s frequently inadequate for the priority date.

  13. I prefer to read the Constitution, but to each his own.

    And if you’re correct, then why do countries with strong IP rights have bigger economies than those without?

  14. I do not think that you an ascertain that statistic since a provisional (even a a second or serial provisional cannot claim priority to anything.

    But it is another reason to chuck the mindless stat-churn that seesmto beguile so many.

  15. Don’t worry Roufousse, there are many inthe states who don’t recognize the “trick” that you recognize.

    I recently won a 6-pack of my favorite beverage from a partner on the very subject.

  16. I am shocked to continue reading relatively “Shill-free” posts with solid pro/com discussion points.

    Am I on the right blog?

  17. MaxDrei, take note – this is the type of post that is relatively “shill-free.” Nice job Pharma Guy.

  18. MaxDrei,

    You see everything as a vindication for your line of reasoning.

    That’s what makes it so unreasonable.

    We have had discussions like this before, inwhich a plainly obvious denouncement of your views was treated by you as “vindication.” Not saying that you are not entitled to your opinion, but such opinions certainly detract from your credibility.

    But silly me, when have the Shillers here ever been concerned about credibility? What they lack in credibility they make up for in volume. Shill away.

  19. Re: “Since academics are used to the rigor of writing papers for peer reviewed journals most of the elements needed for a provisional (and for a non-provisional) can be found within the academic paper.”
    That is certainly the wistful thinking of many university personel – that slapping a provisional cover sheet on an academic paper and filing it is an adequate provisonal application to avoid killing foreign patent rights, obtain a valid filing date, and [soon] to provide an AIA one year grace period to avoid and otherwise instant statutory bar. Unfortunately in too many cases the reality is that since there are no claims, or any suggestion as what might be claimed, or what combination of disclosed features might be claimed, in any patent based thereon, there may well be no requiste 35 USC 112 “description” of the invention.

  20. I don’t think that is a valid comparison. The costs of EPC or other foreign filings are very much higher than filing a national U.S. application based on a U.S. provisional, where the provisional is well enough written to have the sufficient 112 content necessary to get a valid prority date benefit. Furthermore, with a PCT filing you already have gotten a prior art search report and a WIPO publication of prior art defensive value BEFORE the 30 month decision date for costly national filings.
    Nor is doing a paid prior art search AFTER filing a [non-PCT] useable U.S. provisional that desirable because then the search is too late to help prepare a much better specification directed to what is actually novel, unless perhpaps an expensively broad foreign filing program is intended.

  21. Patents are worthless anyway. Patents hinder innovation, not encourage it. The IP system is an unnecessary evil and should just be abolished – read Boldrin and Levines’ book: Against Intellectual Monopoly. But patent lawyers love the system because they make a good living from it.

  22. From my experience, many hard-up clients tend to re-file provisional applications when they don’t yet have a budget to prepare a full application but want to keep a foot in the door. I wonder if there’s any way to quantify how many of the abandoned provisionals have been refiled and their second version used for priority.

  23. Note: An applicant can “convert” a provisional to a non-provisional application within the one-year deadline. A relatively small number of applicants use this conversion procedure (< .1%) [...].

    I suspect that the reason why this rather useless possibility was provided was to make a provisional formally a “regular national filing” in the sense of Art. 4(a)(2) of the Paris Union. The application must, by itself, offer the potential to provide some sort of exclusion rights, regardless of whether or not these are ultimately obtained. If the provisional was exclusively a kind marker post without any other rights, chances are that foreign jurisdictions wouldn’t recognize it.

    The EPO recognizes US provisionals as equivalent to a regular national filing under Art. 87(3) by decision of its president. I used to think that Braendli had somewhat overstepped his powers under Art. 10(2)(a) EPC in decreeing this, as such decisions seemed to be the preserve of the AC in the special case of special bilateral agreements under Art. 87(5) EPC, until I discovered that bit about US provisionals being convertible to regular utility filings. I was a bit disappointed, but relieved after all.

  24. Abandoned provisional applications are indicative of another practice. Within the university technology transfer space it’s easier to slap a provisional application filing form on an academic paper due to be presented at an important conference to protect the “potential invention” than to go through the process of developing a detailed invention disclosure form and evaluate the patentability of the disclosure before an important meeting of the world-wide smart guys association.

    Since academics are used to the rigor of writing papers for peer reviewed journals most of the elements needed for a provisional (and for a non-provisional) can be found within the academic paper. This also fills the requirements for many grants and sponsored research projects without the full blown expense of a non-provisional application. It lets you say you are patent pending, it lets you say you presented an academic paper on seminal technology, it gets you an early priority date, and it lets you abandon it if things don’t work out.

    Look for more of this when first to file becomes a reality.

  25. I work in a large Pharma corporation which switched from post-to pre-PROV searching and we are seeing the benefits in higher quality foreign-filed applications and lower costs. Filing ‘in vacuo’ often means a broader disclosure with a mix of patentable and unpatentable material. Then if you want to retain your PROV date, all the material you wish you hadn’t included, e.g. compounds to support a broad claim, will also publish at 18 months. This can lead to costly prosecution and multiple DIVs as it is usually more difficult to persuade the business to drop protection on published matter than to not file on it in the first place. Also, it’s good to have an idea of the known prior art for fall-backs to comply with strict added matter jurisdictions like the EPO.
    By the way, on the timing of PROV filing, in order to manage downstream costs and lessen the risk of creating our own prior art against more important later filings, we will often expressly abandon and re-file our PROVs during the priority year to buy more time to identify a drug candidate and where the value of the PROV subject matter is low enough to justify the risk of giving up the date.

  26. I suppose everybody has a different lens, through which to judge whether something is efficient or not. The Cowboy sees a 48% rate of abandonment as a detrimental to efficiency whereas I see that statistic as a huge boost to efficiency.

    A properly functioning patent system brings new technology early to the public. Speed to file, and routine publication of enabling disclosures 18 months later, is just what the doctor ordered. That there is a 48% failure to carry pro filings forward into grotesquely time-consuming official examination for patent-eligibility and patentability is something I see (through my lens) as vindication of the benefits of First to File.

  27. Max says: “After all, these days the highest priority is to get the earliest filing date, rather than search it all first. No?”

    Confirms what I have been saying all along: first to file causes you to rush and as we were all told by our granmas: haste makes waste.

    Let’s go back to first to invent.

  28. Well, a significant proportion of PCT filings don’t make it into the national phase. It is national phase entry that is the expensive bit. Could it be that even serious corporate Applicants do their patentability searches only after they file their pro and, when they do, they often find that their big thing’s all been done before?

    After all, these days the highest priority is to get the earliest filing date, rather than search it all first. No?

    What is the proportion of PCT filings that are abandoned at the 30 month national phase entry juncture, I wonder, and how does it compare with the rate of abandonment of pro filings at the end of the priority year?

  29. Thanks. I had said re an earlier blog that some patent attorneys tell me that the provisonals they prepare for private individual inventors often do not get re-filed as regular applications [but that was disputed by another commenter]. Your statistics seem to support that. I doubt if many major companies completely drop a significant percentage of their provisional applications.

  30. My guess is that a large percentage of those abandoned provisional applications are prepared and filed by the inventors, without patent attorney/agent assistance.

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