Provisional Patent Applications: Waiting to File Non-Provisionals

For better or worse, provisional patent applications have always been used as a way to delay patent prosecution. The procedure has become popular as a relatively cheap and informal mechanism for preserving priority of invention without losing patent term. Although a provisional application sets a priority date, the application does not even reach the examination queue until the full utility patent application is filed. Thus, on average, each day of delay in filing the utility patent application pushes the issue date back one day as well. However, provisional applications also serve as a mechanism for extending the tail end of the patent term because the twenty-year patent term does not begin to run until filing of the utility patent.

Provisional applications have become quite popular. In FY2007, for instance, over 132,000 provisional applications were filed and about 30% of recent patents assigned to US companies reference a provisional filing. [Link]

To see how provisional filings are being used, I compiled a set of 65,000 patents that issued sometime between Jan 2007 and Feb 2009 (inclusive). All the patents in the group share the common property of claiming priority only to one or more provisional applications. I additionally excluded patents that made other priority claims such as continuations, divisionals, and continuations-in-part. Once I formed the set of patents, I then looked at the filing date of the provisional application compared with the filing of the utility application to how applicants are using the extra year of deferred examination. For patents claiming priority to multiple provisional applications, I used the date of the earliest filed provisional application.

The graph below shows the result. The vast majority of applicants wait until the year is almost up before taking action and filing the non-provisional application. About two-thirds of the non-provisional applications were filed with less than ten days remaining in the one-year provisional pendency. In over ten percent of the cases, applicants properly filed the non-provisional more than 365 days after the original provisional filing because of weekends, holidays, and/or leap year.

200902212058.jpg

Two weeks ago, I had a conversation with a patent litigator about the propensity of patent attorneys to barely meet deadlines. He was worried about the potential for malpractice claims against his firm. And, here, I found a surprising number of cases that appear to miss the deadline.

My lingering question for patent attorneys and applicants — why delay so long? Is it simply a matter of doing work according to deadline? Does it matter that delaying filing the application also delays the eventual issuance of the patent?

76 thoughts on “Provisional Patent Applications: Waiting to File Non-Provisionals

  1. 76

    To me, this is not only not surprising, but also a reconfirmation that provisionals are being used to their maximum advantage. Particularly in the life sciences space, it is desirable to file a non-provisional claiming priority on the provisional at the last possible moment, for one reason: maximimizing patent term. Why would anyone want to start the 20-year clock ticking any earlier than they have to? I cannot fathom a reason to file a non-provisional prior to the 1-year deadline for that reason.

  2. 75

    But that’s an obscure rule, Abbot. Give Duncan a break. I actually had to look up the rule about order of examination. I thought it was based on US effective filing date. But the Applications are examined in the first instance based on application number, and then given priority thereafter based on the US effective filing date. I wonder what the logic is there.

  3. 74

    “Waiting a year before filing a non-provisional gives the inventor more time to secure funding, as well as delaying the eventual publication of the invention, which usually occurs 18 months after the non-provisional is filed.”

    Um dude, non-provisionals get published 18 months after the filing of the provisional, not the non-provisional. You might want to read up on the rules.

  4. 73

    Thank you Bruce for sharing your practice experience. It was not long ago that I mentioned “converting” a provisional. None of the puppets in the puppet show knew what I was talking about.

  5. 72

    I wonder how many of those academics filing papers as provisional applications realize that they will ultimately have to file the 100 citations in their paper in an IDS?

  6. 71

    I don’t see provisional applications being cheaper in the long run. Rather, they invariably cost more. But they can be filed more quickly and cost less up front.

    The question is how much less. I have run the gamut from filing multiple technical documents as provisionals to filing almost complete 112 compliant applications with at least the major claims fleshed out. Indeed, I almost always file with at least some claims (even in the case of filing all those technical documents).

    Thinking about the one year deadline, etc., we docket starting to work on the utility application at 6 months. This is when we start bugging the clients to decide whether to file a utility application or drop it. But I am currently working on one conversion where we started almost immediately. When we hit the 6 months, a letter went out to the client about converting the provisional. He called totally freaked, since he thought that was what we were already doing.

  7. 70

    “Like football.”

    Now the truth comes out. Professor “Mooney” couldn’t make the team, hence the deeply rooted bitterness.

  8. 69

    Well; for what the admittedly tiny example of my own two PPAs (which were word-for-word identical as their respective pre-amendment RPAs, including claims) are worth; I chose the PPA route for two reasons:

    1.In the belief (since proven correct in both cases) that the market would thereafter come up with embodiments of these two inventions.

    2.Relatedly to #1, to thereby extend the period of licensing income should I elect that route.

    I would point out a drawback to delaying RPAs; however; that I haven’t seen mentioned yet:

    The potential higher PTO filing, etc fees which could (and have been) raised during the one year delay.

  9. 68

    Per Mr. Morgan’s comment, in private practice we usually requested information on whether the inventor intended to foreign file at the time the provisional was filed.

    If they did, we tried to obtain final confirmation of those countries starting around the 8th month along with a written commitment for the refile, with increasing warnings about the increased cost of last minute foreign filing. In the end, we still ended up filing stuff in the last two weeks because the clinet wouldn’t commit the money until the last minute.

  10. 67

    Technology tranfer offices routinely refile provisionals on tech that has not been published if a licensee hasn’t been found yet. They may do so after the expiration date of the provisionals.

  11. 66

    As far as the delay in refiling, (1) the inventor or IP owner wants to delay costs as long as possible, or (2) the attorney has many more nearer deadlines and the refile does not make the radar until it has to be completed.

    And also, aren’t we generally as a group procrastinators?

  12. 65

    Provisionals are often filed when deadlines are short and there is not time to prepare a polished final application. IMH experience, most of the provisionals I have filed or refiled as NPs have been due to lack of time before a disclosure or a statutory bar date.

  13. 64

    Does it matter that delaying filing the application also delays the eventual issuance of the patent?

    In the biotechnology/pharmaceutical arts, it is my perception that the most common (best?) current practice is to file a provisional that is as complete and detailed as the utility and PCT applications that are ultimately filed. Indeed, in many cases there is no material difference in the disclosure or claims between the provisional and utility. The sole purpose for this is to effectively extend the patent term by one year.

    Pharmaceutical (composition of matter) patents provide a good example — generally research on a particular disease or molecule class is intensely competitive, with the predictable result that there is urgency to file before competitors file. But there is no urgency to have a patent issue; given the long lead time for product development, clinical trials and regulatory approvals, even in “go slow” mode patents invariable issue prior to drug product approval. On the back side, assuming approval of a blockbuster drug, the one year “extension” gained by filing a provisional application can quite literally be worth billions of dollars.

    As a practical matter, this strategy only works if the provisional application is sufficently complete to avoid the possibility of priority related problems, such as whether the later claimed invention is enabled in the provisional. The only way to do this is to have the provisional be as complete and thorough as the utility. This also requires that claims be included in the provisional (which some practitioners oppose). It may readily be seen that with this approach provisional applications are neither cheap nor quick.

    As to why lawyers wait until the last minute, well, if you have to ask the question you just wouldn’t appreciate the answer. I will say that my policy is to file PCT applications preferably no later than the day prior to the one-year anniversary of the provisional — I don’t want to get into a national stage argument about how time is calculated (and while not directly relevant to PCT practice, at one time, and perhaps still, Taiwan took the position that the last day of the one year period within which to file to claim priority was the day BEFORE the anniversary).

  14. 63

    Prolixian said:
    “You want to shift the term to the back end as much as you can.”
    MPV said:
    “For pharmaceuticals and biologics, the end of the patent term is worth more than the beginning. Taking the full 12 months to convert recognizes that value.”

    True as far as it goes. My guess is this is not the same landscape that presents itself to electronics or software inventors. Off the top of my head, in that field, one of the few patents that had such long-term pecuniary value (as opposed to just being prior art for later developments) was the one (actually a group of them) that covered mp3 signal processing methods.

    Usually though, developments in those areas are happening on a different time scale. By the time 20 years has passed, my guess is a lot of electronics and software patents cover obsolescent technology. What do practitioners in those areas think? Wouldn’t this be consistent with the divergence in views between Big Pharma and Big Software as regards, say, “Patent Reform”?

  15. 62

    ” found a surprising number of cases that appear to miss the deadline.”

    Cases might appear to miss the deadline by several days if they are filed by physical mailing using a certificate of mailing that locks in the date of presentation for mailing at the post office. I wonder how many of those surprising cases are covered by this circumstance.

  16. 61

    For products that will require a significant amount of time to get to market, the delay of starting the 20 year clock can be a significant benefit in waiting until the final moment to flip a provisional app. For a successful drug, for example, some of the highest value of the patent term is in the last days of the term. In contrast, early issuance can be of little value, if the drug is not ready to sell at the time of issuance. If a drug isn’t ready for the marketplace, an issued patent isn’t needed to bar the competition. You want to shift the term to the back end as much as you can.

  17. 60

    99% of the time upgrading provisionals is left to the last minute because clients are really busy and don’t want to focus on patents until they absolutely have to. It practically never has anything to do with patent term, or delaying prosecution, or my calendar, or even money (a few days difference in paying several hundred dollars doesn’t matter much even to small clients).

  18. 59

    Claritin came off patent at $4 billion per year in sales. For pharmaceuticals and biologics, the end of the patent term is worth more than the beginning. Taking the full 12 months to convert recognizes that value.

  19. 58

    broje: “In my experience, people who are filing provisionals in order to delay prosecution do not convert the provisional to regular. Instead, they file a PCT application claiming priority from the provisional, and then file in the U.S. off of the PCT applciation. This strategy is favored by applicants who want to delay payment of filing and prosecution expenses in hopes of obtaining a licensee and passing those costs onto the licensee. In particular, Universities seem to like this strategy.”

    Yes. I suspect, however, that even this strategy may become increasingly hard to justify as state school budgets dry up and (for better or worse) become focused on bottom line expenditures fixing immediate problems or providing essential services for faculty, staff and students.

    Like football.

  20. 56

    In my experience, people who are filing provisionals in order to delay prosecution do not convert the provisional to regular. Instead, they file a PCT application claiming priority from the provisional, and then file in the U.S. off of the PCT applciation. This strategy is favored by applicants who want to delay payment of filing and prosecution expenses in hopes of obtaining a licensee and passing those costs onto the licensee. In particular, Universities seem to like this strategy. If the provisional is converted to regular in the U.S., then I expect that delaying preparation, not prosecution, of the application is the primary concern. Thus, imminent disclosure and/or delay of preparation fees seem like the most credible motivators for those who did file off of the provisional, resulting in the data analyzed by Dennis.

  21. 55

    In start-ups, it’s all about the $ and when you get it. Initially all you;’ve got is a 4th mortgage on your parents’ house or something and you’re scrambling to impress deeper-pocketed investors and lenders.
    “Patent Pending” impresses them, but money is tight (and so is time because you’re consuming that little bit of money every day, bringing your parents close to bag-personhood). So you file some provisionals and stick those filings in your PowerPoint DPS for ammunition.
    If all goes well, in a few months you’ve got more money, but now you’ve got to hire more people, get more equipment, build beta units, advertise, etc. Many investors are very “hands-on” (for good or for ill) about where the money goes and when.
    A typical instruction is “don’t spend until you HAVE TO, especially if the ROI is long-term.” 3 years to get a patent issued is a geological amount of time to this kind of investor; 20 years till it expires seems so unreal that I doubt they even think about it (pharma might be an exception, but I don’t know any pharma-startup veterans).
    Therefore, they won’t hire attorneys to file regular utility apps for start-ups until push comes to shove. . . e.g., when the provisional year is very close to running out. Not everybody sails this close to the wind, but I’ve seen enough neurovorous (feeding on each other’s nerves) investor/exec/Board combinations around here to surmise that it happens a lot.

  22. 54

    Babel Boy: “1. JW and others contend provisional patent applications are cheap. That is a myth; they are not cheap.”

    It is a fact that provisionals can be very cheap to file, cheaper than any utility or PCT application.

    “A PPA will add thousands of dollars to the overall prosecution costs.”

    Wrong. In some circumstances a PPA could add “thousands of dollars to the overall cost” (e.g., if it is very poorly drafted) but in my experience mostly that is not the case. The fact remains that provisionals can be very cheap to file, cheaper than any utility or PCT application.

    Let’s keep it real.

  23. 53

    Because the earlier you file the non-provisional or PCT application the sooner you start the 20 year clock… and for a billon dollar product that has taken years to get to market those extra days generate millons of pounds of extra money. A pharma attorney will always file on the last day.

  24. 52

    I file a large number of provisonals for my clients, who are mostly smaller (< $100,000,000.00 in sales) and independent inventors. To my clients, the three most compelling reasons for filing provisionals are (1) cash flow; (2) trade show; and (3) I don't know. From a cash flow perspective, the relatively lower cost of a provisonal, coupled with the benefits obtained by filing something (telling the world it is patent pending to fend off the wolves) , allows the client to spend the difference not spent on the utility on promoting the invention. By so doing,the client is better positioned to determine whether the invention is economically viable enough to warrant the investment in a utility. For my clients, it is not economically viable in about 40% of the cases. The "trade Show factor helps preserve the foreign filing rights of the client who tells you about the invention two days before he is heading off to a trade show. The "I don't know Factor" helps clients who want an early filing date, but appreciate that they still have some work to do on the invention to make it "market ready" and would rather wait until it is market ready before spending the money on a provisonal. Not surprisingly the "cash flow" factor is the most important. More than one client has told me that although they have the cash on hand for a utility application, they feel as though their money is better spent by smiling a small portion (about 25 - 30%) on the provisional now, and using the rest of the "utility money" to promote the invention, to thereby learn more about its economic viability. Just my 2 cents. Vic

  25. 51

    1. Unless you know your competitors are practicing your invention at the time of filing of the utility patent, thus your damages are already accruing, there is no financial incentive to file the utilty patent until near the deadline.

    2. The Patent Office’s response time sometimes seems completely independent of the filing date; e.g., closely-related, but separate, art units may have differing average response times in issuing first office actions; certain units take years to issue. This uncertainty does not incentivize filing earlier rather than later.

  26. 49

    Typically, when the firm confirms to our client that a provisional was just filed, we advise the client of the need to follow up the provisional with a non-provisional within one year. A few months later, our automated docketing system reminds us to send a reminder letter to the client. Few clients respond to this. Finally, about three months before the 12-month period is over, the docketing system reminds us to send an “Urgent” letter. Some clients may respond to this, but more often than not they simply call and acknowledge that they need to make a decision and promise to do so “soon.” We then start phoning the clients to remind them, with increasing urgency. Finally, a few weeks before the 12 months is up, we tell the clients that they have to act NOW, or else we won’t be able to get a non-provisional filed. A week or two later, with maybe a week or two left in the 12-month period, the client finally gives us the green light. This scenario is painfully typical of what I have experienced with provisionals. I hate them.

  27. 48

    Just a couple of random thoughts:

    1. JW and others contend provisional patent applications are cheap. That is a myth; they are not cheap. A PPA will add thousands of dollars to the overall prosecution costs.

    I have yet to pick up a PPA, dust it off, add claims, and file it as a regular patent application. There is almost always new subject matter (which does not get the PPA filing date), and extensive re-writing of the spec to accommodate the claim language.

    My guess would be that the client ends up paying close to 2x the total fee if they go the PPA route. I would love to see stats on that.

    2. The question of why attorneys wait so long to file the RPA begs the question of whether the person asking why attorneys take so long knows how a law firm operates.

    We file a PPA, a paralegal sends notice of the filing to the client and sets forth the 1 year deadline. In 3 months we send another notice of the deadline. In 6 months we send a 3rd notice. In 9 months we send the 4th. At roughly 1 week before the deadline we finally get instructions from the client to file the RPA.

    There’s not a lot a lawyer can do until the client sends the retainer and instructs the lawyer to file.

  28. 47

    I concur with Actual Inventor. For those of us who have been entrepreneurs working on a shoestring, the provisional is a way to put a stake in the ground while finding financing to do the full patent and the research that goes with it. The filing fees and attorney’s costs for a provisional are much less than for the full patent, and when one is first starting a company, it may be all that is affordable. As Actual Inventor says, the provisional also buys time: It is rare for a startup to acquire funding (much less to create a sellable product) in the optimistic timeframes most entreprenuers operate with. As it is, I’ve ended up writing the description text and creating the drawings for every patent I’ve filed, because my employer couldn’t afford to have the law firm do it. I did convince them to have the attorney craft the claim language; having me write claims would be a lot like pressing a mechanic into service as a dentist. Both may use pliers, but there are different skills involved.

  29. 46

    Two forces for enactment of U.S. provisionals were university and small inventor political representatives who apparently thought that merely stapling a USPTO provisonal application filing form onto an academic publication, or onto a brief lay description of a bare conception, and filing it, would give them a valid filing date that would win interferences, avoid U.S. and foriegn statutory bars and intervening prior art, etc.
    I wonder how many are still so misguided?

  30. 45

    Dennis,

    As to whether provisional filings are used more by individuals and startups, It would be interesting to know the following about the 65,000 patents:

    How many have more then one inventor listed?
    How many have an assignment recorded?

  31. 44

    In my experience, provisionals are used mainly for one reason: They are cheap.

    If there is any doubt as to how to proceed (whether the invention will be marketable, if there may be more supportive data in the future that will be added to any non-provisional, etc.), this is a good way to defer the financial commitment of a non-provisional application while still being able to toute a “patent pending” status.

    In reality, one year of deferment is not a lot of time, and often inventors and small companies will be making final decisions at the very last moment, including whether or not they are willing to commit to the cost of a non-provisional.

  32. 43

    It is always useful to delay until near the end of the term, but perhaps the day before the 12-month date. It is handy to leave a day or two in hand because sometimes, inevitably, things go wrong.

    Those of us in private practice also know that it is difficult to get instructions from clients until the last minute.

    But beware cheap provisionals. If the information needed is not there in the document as filed (including the generalizations required to support good generic claims), then you will probably not have a priority that is useful in Europe. Whether or not a cheap and dirty provisional works in the US is not for me to say.

  33. 42

    Although there are some good reasons to use 112-adequate provisionals noted above [and elsewhere, like legally adding a full year to the patent term] the biggest problem I had was trying to convince “prosecution procrastinators” that delaying the U.S. formal filing a full year meant greatly increased costs for the last-minute preparations of all Paris Convention foreign equivalents conforming to, and needing to claim joint priority from, that final formal, U.S. application adding new matter and/or needed claim language (i.e., not just claiming priority only from the provisional application). So we set an absolute in-house docket deadline of 9 months for everyone.

  34. 41

    Many actual reasons that I file provisionals and wait have been discussed here – one that has been alluded to but not called out specifically is that sometimes I don’t need the patent now but I do need it to last longer, and I can get a year more by filing a provisional.

    Also, someone made an error above regarding publication dates – PCT and (well, officially) PTO will publish 18 months after your earliest priority date, e.g., 18 months after your provisional was filed. However, PTO won’t publish until after your formal papers are in, so you can postpone publication by taking an extension on the missing parts, assuming you didn’t file with a declaration.

  35. 39

    I would also be interested in the percentage of applications assigned to universities. In addition to the points made by Mr. Pincus, the academic push for publications and (especially for state universities) a lack of funding available to pursue international protection and licensing both work to create a lot of provisionals. Often it is just a copy of the article to be published.

  36. 38

    Actual Inventor hits the reasons exactly why a provisional is important-that is, to someone that actually can invent a product that contains real utility use that requires more homework pertaining to viability and potential commercial success. I’ll one up MRT and state the mortgage bailout won’t work-a straight-line federally mandated 3.5% interest rate for all homeowners is warranted and is the only fair way to address the problem in an even-handed method. I’m going to file a provisional on that method.

  37. 37

    How many of the patents in the set of 65,000 were assigned to universities? Universities frequently apply for provisional patent applications because it holds down cost and opens a one year window during which they can try to find a licenseee for the invention. It also gives the inventor time to generate additional data that will make the invention more attractive to a licensee.

  38. 36

    It would be interesting to look at the subsequent payment of maintenance fees. For example, for patents issuing from an application filed close to the end of the 12 month period, if a large percentage are allowed to expire rather than pay the first (or second?) maintenance fee then that may indicate that the delay in filing was a result of economic or other concerns of the inventor rather than patent term considerations.

  39. 35

    “Last day” filing is imprudent to say the least. Well-managed corporate clients demand draft papers for review well in advance of filing deadlines. E&O insurers don’t seem to get too involved reviewing docketing practices until there’s a claim, when it’s probably too late. Why would any sane practitioner wait until the last day, when illness, death or other unforeseen occurrence could prevent timely filing?

  40. 34

    rpc, you have basically no useful rights until your patent issues, so if you get it issued sooner, and someone is infringing now, you get them now. You may have a product that will be of no use or in little demand in 15 years time anyway, so tacking the term on the end doesn’t help you. On the other hand, if you’re big pharma and the drug that the chemical formula in your patent covers its still being tested, and the market for it won’t mature until 8 or 9 years, you’ll want the patent term at the end.

  41. 33

    Is Parkinson’s law of Triviality a trivial subject or a truly significant topic? ’cause I might have something to contribute.

  42. 32

    I concur with Zweig and don’t understand nase’s comment: “You just opted to get it at the front end rather than at the back end.” For me (and speaking solely about patents), the front end is less valuable than the back end. While Actual Inventor nails several very good reasons for taking the full period, one of the top three was stated by Professor Crouch: “the twenty-year patent term does not begin to run until filing of the utility patent.”

  43. 31

    “Kevin, what are the concerns regarding PCT International applications?”

    It’s another deadline on the same clock. I guess maybe you have two more months under that recent revision, but I don’t think all countries will recognize that for national filings. I know the US wouldn’t.

  44. 30

    Just sayin’ – I think the opposite may be true – that Parkinson’s law of Triviality is not followed on these message boards as the Patent issues are complex and not trivial and yet, everyone seems to have an opinion.
    “Even those with strong opinions might withhold them for fear of being shown to be insufficiently informed.” – from wikipedia
    link to en.wikipedia.org

  45. 29

    The comments section is a good example of Parkinson’s law of Triviality. When a relatively trivial subject (Parkinson’s bicycle shed) is posted, it garners a huge number of answers since everyone feels they have something to contribute.

    On the other hand, when there is a truly a significant topic (Parkinson’s power plant) there are relatively few to engage the discussion.

  46. 28

    strawman, strawman, strawman,… blah blah.

    the bottom line, it that the provisional is not typically “used” to delay prosecution – although it could be.

  47. 27

    Steve Zweig:
    You didn’t leave it on the table. You just opted to get it at the front end rather than at the back end.

  48. 26

    Provisional applications save money, give the inventor more time to think through the invention, and extend the length of the patent term! Unless the applicant is in a rush, isn’t it better practice TO wait for most of the year?

    My main regret is the time that I filed a regular application only four months after I filed a provisional, leaving almost 8 months of patent life on the table.

  49. 24

    Re: Malpractice and “barely meet[ing] dealines”:

    Asking why patent attorneys (or any other kind of attorney) cut deadlines close seems like a rather pedestrian concern.

    A better question is: why should the question of malpractice vel non turn on the passage of one day? What type of mental midgetry led to the law’s pervasive practice of imposing all sorts of rigid arbitrary cutoffs – from 6-month max dates to the Paris convention date to statutes of limitations – where everything is 100% okay before, and 100% not okay after? Why not have some sort of sliding scale, thereby eliminating most malpractice fears. Why not just charge a 2^t dollar late fee, where t is the number of days late? Under an exponential fee, attorneys wouldn’t let things drag on too long, and the fear of malpractice suits would be greatly reduced.

    The oft-cited reason for these cutoffs — the public’s “right to repose” – doesn’t really apply to patent deadlines. The public doesn’t know what is about to be put into the public domain due to some attorney’s inaction, and generally won’t know what inventions they became the unwitting heirs to under years later. They can’t have an interest in knowing the exact date on which they become windfall beneficiaries of an invention that they probably didn’t know existed.

  50. 23

    As an “Actual Inventor” I use provisionals for a variety of reasons including but not limited to:

    1. Delay Prosecution.

    The patent laws and rules have changed quite rapidly from Lundgren to KSR to Bilski Enbanc. Having a year to see which way the patent winds are blowing and make adjustments to your application for prosecution is very helpful.

    2. US Pat Pending

    When marketing your business the legal of use of US PAT PEND can help get attention and often makes an impressive statement if used correctly.

    3. Actual Reduction To Practice

    The year delay allows me the time to implement the invention and rack up secondary factors for over coming obvious issues like commercial success, unexpected results, and even proof of teaching away. Love it when people say that is the wrong way to go or its against the state of the art etc. I just make a note in my journal for later use during prosection 2 or three years down the road.

    4. Its Cheap!

    Lets face it. The Provisional is cheap to file! A real God send for the “Actual Inventor” that does not have the money or at least the inclination they can waste other peoples money, that those big publicly traded corporations do.

  51. 22

    JustBrayin’ “One more thing SCROTUS, just because you CAN “delay prosecution” doesn’t mean that is why most people file provisionals.”

    There you again. Fighting another strawman. Confused SCOTUS never said that “most people file provisionals in order to delay prosecution”. Yet here you are scolding him/her. “One more thing.” LOL.

    And then you write “Free Agent gets it.”

    Maybe. All Free Agent is saying is that, in his/her practice, after the provisional is filed, he/she doesn’t rush to file the utility because “the relatively long fuses of converting provisionals make them easy targets” when trying to prioritize tasks in a docket. But I’m sure Free Agent will also agree that if the client said “The utility based on that conversion must be filed by the end of next week, period,” then Free Agent would see to it that the utility was filed.

    I’ll go way out on a limb here and state that most prosecutors, when they file a first provisional drawn to a given technology, are not planning to file a utility or PCT claiming priority to it earlier than 11 months down the road. The time is valuable.

    To answer Dennis questions directly: “Is it simply a matter of doing work according to deadline?”

    No, it’s a matter of taking as much time as possible to flesh out what’s disclosed in the provisional and/or shop it around to see if a licensee will bite and pay for prosecution of any utility application.

    “Does it matter that delaying filing the application also delays the eventual issuance of the patent?”

    If it matters, the utility is filed earlier, which does happen with some frequency, as shown in the graph.

  52. 21

    “My problem with the provisional is that I still haven’t figured out a good way to write a patent application without writing the claims first. Obviously this is a problem with provisionals. When the utility is written off of the provisional, the claim terms never match up with what I want in the spec. ”

    I think ur doin something rong.

  53. 20

    Why do people wait until the last minute? It’s a corollary to thermodynamics – they’ll take up as much time as they can. You could change the deadline to 6 months or 2 years and they’d still be filing at the last minute.

  54. 19

    Smashmouth is dead on.

    My problem with the provisional is that I still haven’t figured out a good way to write a patent application without writing the claims first. Obviously this is a problem with provisionals. When the utility is written off of the provisional, the claim terms never match up with what I want in the spec.

  55. 17

    One more thing SCROTUS, just because you CAN “delay prosecution” doesn’t mean that is why most people file provisionals.

    Please re-read, if you are capable, Free Agent’s post.

  56. 16

    Amazing! Michael R. Thomas comments here when there is so much economic turmoil in the world. I would have thought he would have been too busy.

    Tell us MRT, how are you going to solve the financial crisis? What business method patent have you come up with this time?

  57. 14

    Free Agent gets it.

    SCROTUS writes “This makes no sense, cause you can preserve/secure the priority date by simply filing a nonprovisional. ”

    It makes a lot of sense, because we aren’t talking about nonprovisionals.

    Just say no to mind numbing drugs.

  58. 12

    I had a law school professor who had extensive previous experience as a patent attorney, specializing in pharmaceuticals. He told us stories of filing provisionals just hours to spare before his clients were intending to make public disclosures at professional conferences. At least in this case his primary aim was simply to avoid self-inflicted 102 bars to patentability.

  59. 11

    Graphs graphs graphs. When’s t v d coming out?

    “why delay so long” becuse they r teh laz z? That’s why my amendments go overdue usually.

  60. 10

    When I originally concieved provisional patents my intention was for them to be an improvement on the initial disclosure document program. You could put your original conception in a secret file then improve on it over a period of 1 year to get it into condition to file a non-provisional. Also it serves as a record of the ability of the inventor to advance the invention to prove inventorship and first to invent.

  61. 9

    We delay because we CAN delay.

    I don’t know about anyone else’s practice, but I’m almost always booked solid for the next 3-4 months. I have one client in particular who likes to send urgent work with very short fuses on top of the applications/amendments due 3 months from now. What do you do when you’re up against a series of deadlines and you get something else dropped in your lap? You delay something. And the relatively long fuses of converting provisionals make them easy targets.

    Of course, then you back yourself into a corner with the conversion deadline and something else gets delayed.

  62. 8

    Just sayin: “I don’t think the above conclusion is accurate. Provisionals are generally not “used” to delay prosecution. They are “used” to preserve priority dates, but IMO not with a lot of consideration regarding term.”

    This makes no sense, cause you can preserve/secure the priority date by simply filing a nonprovisional. The main difference between the provisional and the nonprovisional is that there is no examination of a provisional, ergo, the difference is you delay prosecution by filing a provisional.

    There are many advantages to filing a provisional, in addition to delaying prosecution. For example, many of my clients file several provisionals during a one-year period, each provisional directed to a marked improvement in development, and then at the deadline file a nonprovisional covering all the inventions from the provisionals, notwithstanding the possibility of receiving a restriction requirement, which of course provides yet another tool for delaying prosecution.

  63. 7

    You, er, I mean the author, said “for preserving priority of invention without losing patent term”

    To most, the above means that somehow term comes into consideration.

    You can’t write very well; I guess I shouldn’t expect that you can read. But you always seem to be able to use the sophomoric phrase “strawman” very well and tiresomely often. Congratulations.

  64. 6

    Thanks professor Mooney, when you play little games with my screen name, we all get a chance to see how insecure you are. But we knew already.

  65. 5

    Just Reflexively Disagreein’: “I don’t think the above conclusion is accurate. Provisionals are generally not “used” to delay prosecution. They are “used” to preserve priority dates, but IMO not with a lot of consideration regarding term.”

    Of course, Dennis didn’t say that “a lot of consideration regarding term” went into the choice of filing a provisional. But it was very impressive the way that you took that strawman down.

    And, yes, provisionals are “used” to delay prosecution. Nice “use” of quotation marks to obscure the issue. I’ll have to “try” that sometime.

  66. 4

    “I think one reason is because the inventor wants to keep the invention secret as long as possible.”

    Maybe, but I think most provisionals are filed as a relatively cheap way to establish a priority date in response to an impending disclosure. The reason filers wait close to a year is because filers are generally start ups or relatively small inventive entities with limited budgets and because 1) the filers wait as long as possible to make a decision to commit funds and proceed 2) it takes close to a year, after the compulsory breathing period to round out the content and add the appropriate claims and 3) human nature is to wait until the last possible minute with certain kinds of decisions.

  67. 3

    “For better or worse, provisional patent applications have always been used as a way to delay patent prosecution. The procedure has become popular as a relatively cheap and informal mechanism for preserving priority of invention without losing patent term.”

    I don’t think the above conclusion is accurate.

    Provisionals are generally not “used” to delay prosecution. They are “used” to preserve priority dates, but IMO not with a lot of consideration regarding term.

    Kevin, what are the concerns regarding PCT International applications?

  68. 2

    I think one reason is because the inventor wants to keep the invention secret as long as possible. Some inventors file provisional applications and then use the filing receipt as leverage for gaining funding by some company in the marketplace. Waiting a year before filing a non-provisional gives the inventor more time to secure funding, as well as delaying the eventual publication of the invention, which usually occurs 18 months after the non-provisional is filed.

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