By Dennis Crouch
Provisional patent applications have received increasing focus as an integral element of corporate patent filing strategy. Although many patent attorneys reject this strategy, hopeful US-based patentees regularly use provisional applications as a cheap method for obtaining an early patent application priority filing date. Provisional applications have a very low filing fee and do not require the same level of formality as a true or non-provisional application. In this sense, a provisional application is thought of as a “poor man’s patent application.” A provisional filing allows an applicant to obtain an early filing date for a low cost and delay or avoid further prosecution costs. And, with provisional applications, patent term is not lost but simply shifted forward in time.
Delaying Decisions: In my empirical studies, I find that a substantial number of provisional patent applications are abandoned. That statistic suggests that the provisional system is working as a mechanism for delaying the decision on whether to substantially invest resources in the newly invented technology. The one-year delay can be important in providing applicants with time to determine whether the particular avenue of technology will be commercially important.
Substitute for Invention-Date Rights: In my article on invention date novelty, I argued that provisional patent applications serve as a partial substitute – or an alternative approach – for patent applicants attempting to rely upon their date of invention when proving patentability. The early provisional filing date is often a much simpler alternative than proving conception, diligence, and reduction-to-practice. In my article, I treated provisional applications as an alternative choice available to applicants who want to show an early priority date and who do not want take the steps required claim that date based upon pre-filing invention activity. The recently enacted Leahy-Smith America Invents Act (AIA) changes that alternative into something of an imperative in that the new law largely eliminates an a patent applicant’s ability to rely upon anything other than a filed application in proving priority of invention. I expect that this change in the law will lead even more companies to choose provisional applications filings a core tactic in their approach to patenting.
Grace Period for Disclosure: Under the AIA, an inventor’s early filing date is important because any disclosure by a third party prior to the inventor’s filing date will normally be seen as prior art that can negate patentability. There are two major exceptions to this general rule: a third party disclosure within one-year of the applicant’s filing date not count as prior art if either (1) the inventor had already disclosed the invention prior to the third party disclosure or (2) the third party disclosure was somehow derived from the inventor. As Professor Jason Rantanen has discussed, this provision offers an incentive to applicants to go ahead and disclose their invention as a mechanism of defeating potential prior art.
Poor Man’s Provisional Application: In many ways, a pre-filing disclosure draws a line in the sands of time in much the same way that a provisional application establishes a priority date. Self-disclosure offers similar benefits to that of a provisional application in that it is cheap with few formalities and provides an additional year of delay. In fact, public disclosure should be cheaper and easier than filing a provisional application. In the same way that a provisional application is seen as a poor man’s patent application, I suggest that public disclosure will be seen as a poor man’s provisional application or a “really poor man’s patent application.” The disclosure allows an applicant to buy an additional year of delay with few capital expenditures and without losing patent term but instead merely shifting the term forward in time.
Some of the Problems with Disclosure: There are a number of problems with the pre-filing disclosure strategy. Most importantly, a pre-filing disclosure would substantially negate the potential for non-US patent rights because most other countries have a more absolute rule that pre-filing disclosures negate patentability. In addition, a public disclosure eliminates the ability of an applicant to pursue technology development in secrecy. (Provisional applications are not made public until well after their one-year expiration.) However, the new law does not require that the public disclosure identify the inventor or assignee but only that the invention be publicly disclosed. This offers potential anonymity if not absolute secrecy. Finally, the lack of formal requirements associated with the disclosure invites cost cutting and low quality, inadequate disclosures. This will scare forward looking attorneys who realize that the underlying purpose of the disclosures is as legal documents relied upon to prove priority.