Abandoning Provisional Applications

By Dennis Crouch

This post is a follow-up on my November 2012 discussion of provisional rights entitled Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned.

Provisional patent applications continue to be more popular than ever. In FY2012, more than 160,000 provisional patent applications were filed – a new record. Although the number of provisional applications continues to rise, applicants have also been abandoning more of these provisional applications without relying upon them for priority. The bar chart below helps to show this result. The red bars represent the number of provisional applications filed each fiscal year. The blue bars represent the number of provisional applications filed in a given fiscal year that are relied on as a priority document – either in a US non-provisional application or an international PCT application. The difference between the two charts is the number of provisional applications abandoned without being used as a priority document. (Note – reliance/abandonment information is not yet available for FY2012 because those applications have not all been pending for at least one year.)

The second chart (labeled Abandoning Provisional Applications) reformats the information from above to show the percentage of provisional applications that are abandoned without being relied upon as a priority document.

What is apparent from the chart below is a greater percentage of provisional applications are being abandoned without reliance each year. I should note here that my prior estimate of 50% being abandoned was close but still an over-estimate. Rather, 48% of provisional applications filed in FY2011 were abandoned without being relied upon as a priority document.

As I previously wrote, the significant and growing number of provisional that are abandoned-without-reliance is a sign that patent applicants are very much using the non-provisional/PCT application filing as a culling point. These are big numbers – for FY2011 we're talking about over 72,000 provisional applications that are lost in the wind.

86 thoughts on “Abandoning Provisional Applications

  1. 86

    Of course you accord no weight – you who laugh too early with your pile of dead horses at the well.

    Joking about typos on a blog? Really? Well, I guess that’s the extent of your intellect. Not surprising.

    And nowhere do I fantasize about your “circle.” That might be a Freudian slip of yours…

  2. 85

    Act like you’ve been in the endzone before MaxDrei.

    You remind of the (american) football player who celebrates on his way to the endzone and is stripped of the ball before he scores.

    You celebrate with insults far too early, as even though you are correct in what you post, I am not incorrect in what I post.

    (as surely you have been on the receiving end of being gutted far more than I)

  3. 84

    Glad to return the favour Leo. I did like Poppycock. But seriously, anon provides for me a useful function. In my experience, many otherwise pleasant US patent attorneys are handicapped by the notion that, if something is so under domestic US patent law then it is surely just so in the patent law of the rest of the world. I need all the practice I can get, clinically to gut such attorneys of their deep-seated misconceptions.

    And as always, humour can be the best way to drive a point home.

  4. 83

    I still do not know what “PTC practice” is. When I Google it I get Psychological Testing Centre.

    If there is anything for which you might think of apologizing, it certainly isn’t “speaking about US practice”. Discussion of that is what this site is all about. One aspect of it is “US practice” under the Paris Convention, to get solid patent protection overseas for US inventor clients.

    As for your personal “guarantee”, you will understand when I say that I accord no weight whatsoever to that particular undertaking.

    Readers are welcome to laugh with me, or at me. I can’t hear any of it. Apparently though, you can.

    When you fantasize about a “circle” that you imagine I’m a member of, you give me yet another laugh. Hey readers, could it be that “PTC” was a Freudian slip.

  5. 80

    Stop. Remember Mark Twain. Every time you post you reveal yourself as even more of a plonker. People are laughing.

    Sage advice – when (and that has been often) given to you.

    As soon as you pay heed, I may consider doing so as well; deal?

    LOL – as my archer friends says, thought so.

    And as for the laughter, I guarantee that you and your circle are laughed at far more often than I.

  6. 77

    My discussion of “PTC practice”. Huh? Where do you get that from. Very sad.

    Stop. Remember Mark Twain. Every time you post you reveal yourself as even more of a plonker. People are laughing.

    Google “plonker” if you don’t know it already. You might learn something. I just did. I never knew where it came from, or how many meanings it has these days. Pick the one you like best. Feel free.

  7. 76

    Plonker…?
    Off of Gene’s blog…?

    LOL

    If it’s any consolation, I apologize for speaking about US practice in interruption of your discussion of PTC practice.

  8. 75

    Pedantic Pete adverted to a “Paris Convention problem” and I replied.

    Then I was rudely interrupted by your “Um, no” posting. When I challenged you on it, you replied with your:

    “my emphasis was on US practice (and US provisional practice in particular)”

    thereby revealing yourself to be a total plonker. Domestic US practice has nothing at all to do with problems under the Paris Convention.

    I think we all know by now what “your emphasis” always is. You are so much in a hurry to call people out that you have no time to read the post first. Accordingly, as far as I am concerned, a period of silence on your part would be more than welcome. I have a suggestion: why don’t you take yourself off to Gene’s blog, a place where you fondly suppose you are more than welcome.

    Oh, wait, I know the answer, it’s too quiet for you over there.

  9. 72

    You forgot about the part including the “what for.”

    Please note exactly what the ‘what for’ is for.

    Thanks for agreeeing with me again (in your own inimical way).

  10. 70

    Funny, I thought that that ball was in your court to provide authority for keeping the copies…

    I did. Now I’ve also provided the authority that says that the PTO can destroy them after 5 years. Thanks for your help.

  11. 69

    Actually, 3303(2) simply says that the PTO can ask permission to destroy files. Which they apparently have done, and received. So, I was mostly wrong – it appears that the PTO has been given permission to destroy not-relied-upon provisional applications after 5 years.

  12. 68

    44 USC 3300 et seq. comes close, but I don’t see that it dictates preservation of expired provisional patent applications. It seems to leave a lot of discretion to agencies that collect records as to what to keep. Especially 44 USC 3303(2), if the PTO thinks expired provisionals are not worthy of preservation.

  13. 67

    We’re still waiting for you to cite an authority to support that the PTO is not required to keep copies of provisional applications.

    Funny, I thought that that ball was in your court to provide authority for keeping the copies… (Please include the ‘what for’ in your authority cite)

    And you’re on the right track already with the paperwork reduction act.

  14. 66

    Training is always a good thing.  Training engineers on what it takes for a sufficient disclosure for section 112 purposes saves everyone a lot of money.

    Sent from iPhone

  15. 65

    We’re still waiting for you to cite an authority to support that the PTO is not required to keep copies of provisional applications.

    I’m also interested in any authority to the effect that “the government is required to minimize the records it keeps,” for that matter.

    Neither should be very hard to produce, for a person of “substance” like you.

  16. 64

    anon: “Nice little circle you got there MaxDrei, but you should be careful of who you hang with “

    Translation: “Oops, I’m sorry, Max. I somehow missed the reference to the PCT in your 6:40 comment, even after I copied it into my own comment! Of course, you are correct. I apologize for the confusion.”

  17. 63

    Nice little circle you got there MaxDrei, but you should be careful of who you hang with (guilt by association and all that) – and yes, my emphasis was on US practice (and US provisional practice in particular).

  18. 62

    Thank you MM and Leo. I am wondering how long we must wait until we hear from “Um, no” on this issue.

  19. 61

    That’s what you thought?

    Yes. I know (hint: that’s not a point in your favor)

    You’re not fooling anyone

    Good – I wasn’t trying to fool anyone.

  20. 59

    Ned,
    I agree, but if you or the client uses a good invention disclosure statement that prompts the inventors for sufficient disclosure, this can also work, plus reduces the cost of preparation. This takes a little client or inventor training, but even works with small companies and individual inventors. Many engineering managers have a authorization level that can include $2K to $3K for preparation and filing of provisionals, but do not have authorization level for >$5K for a nonprovisional or PCT. This create a natural selection or “culling” process, but adds value to the company IP program by not unnecessarily limiting initial IP protection prior to the provisional preparation and filing.

  21. 58

    MD “I can file, expressly withdraw the next day, and on the first anniversary of that filing I can file PCT with a declaration of priority from the expressly withdrawn application.”

    True. I haven’t done it myself but I do recall seeing the issue come up for some reason or the other, either here or in practice.

  22. 57

    Interesting question, Max. Since your question is about the Paris Convention priority right, we can ignore the situation in the U.S. when a PCT application designating the U.S. claims priority to a U.S. provisional application.

    I don’t see anything in Paris that would prevent you from doing exactly what you describe. As I read it, the “abandoned, withdrawn, refused” stuff only applies if and when you file a second application that covers the same subject matter as the first.

  23. 56

    You’re not fooling anyone, anon. If you can any authority to demonstrate that the PTO is not required to keep copies of provisional applications, then out with it. (A helpful hint – the Paperwork Reduction Act is not going to do it.)

    That’s what I thought.

  24. 55

    You have a funny way of saying “I agree with you,” …”

    Yes, I can see how you were fooled by my statement of “That is certainly true.”

  25. 54

    The fact that you think that that was random is more telling than anything that you could have posted.

  26. 53

    IANAE – how inane. And ironic, trying to make a joke and missing the point (just like the archer). Do you guys coordinate your misses?

  27. 52

    “Could”? More like must.

    You are desperately needy, aren’t you? I’ve never encountered anyone so anxious to claim victory over someone who is agreeing with them. Fine, if you want to get pedantic, there’s no “must” about it – there’s no requirement for you to initiate the derivation proceeding in the first place.

  28. 51

    And I assume that you are aware that the government is required to minimize the records it keeps, right?

    Are you disputing anything I said, or are you just asking random questions?

  29. 50

    Goodoh! Thanks anon.

    Now, which of you following this thread feels like agreeing, or disagreeing, with his knee jerk “Um, no” statement?

    While we are waiting, anon, do you care to cite the authority for your remark? If you do care, you will want to keep in mind that we are talking about filing under the PCT, rather than under domestic US patent statute law.

  30. 47

    All this nattering about Private vs. Public PAIR is really beside the point

    LOL. Another arrow into the ground at the feet of Mr. Bloom. On the contrary, who has access and for what reason is very much on point.

    And I assume that you are aware that the government is required to minimize the records it keeps, right?

  31. 46

    Mind you, some of the replies are not very helpful.

    Those are relatively easy to identify. They typically begin with “MM said…”

  32. 45

    One thing I don’t yet know though is why you single me out, as needing to be educated.

    LOL. MaxDrei, you don’t know? Seriously? (Hint: look at what you post)

    For instance: “I can file, expressly withdraw the next day, and on the first anniversary of that filing I can file PCT with a declaration of priority from the expressly withdrawn application.

    Um, no. You can only claim priority to a live app.

  33. 44

    That is certainly true. Proving the time of invention could be quite helpful, though. You could use other evidence to demonstrate that the deriving party had access to the information included in the provisional application.

  34. 43

    37 CFR 1.14(a) seems imply that the PTO is not required to provide copies of provisional applications that are not relied upon for priority or incorporation by reference, etc. So perhaps the PTO is not required to keep copies.

    37 CFR 1.14(a) says that the PTO will not give copies of those applications to the public. It can’t, per 35 USC 122. But that says nothing about whether the PTO is required to keep copies.

    Of course, the PTO is required to keep copies, just as every government agency is required to keep most government records. (USC Title 44, Chapter 33.) All this nattering about Private vs. Public PAIR is really beside the point – the person who filed the provisional application can get a certified copy if he thinks it is of evidentiary value.

  35. 42

    PAIR (public or private) does not give “derivation” support.

    It can give a time of one party’s invention, but clearly, to prove derivation you need much more than that.

  36. 40

    Yes, Pete, thanks and I’m grateful for your concern for my clients, but what you write I did know already.

    One thing I don’t yet know though is why you single me out, as needing to be educated.

    Was it something I wrote, that brought you to the conclusion that MaxDrei in particular, needs tuition on the priority right given by the Paris Convention? If so, what was it please.

    BTW, I’m intrigued by the notion of “express abandonment”? In Europe we distinguish between passively abandoning efforts to prosecute a patent application and writing to the PTO to actively, expressly and unequivocably withdraw it unconditionally. In the USA, when does abandonment become “express” abandonment? Perhaps when Applicant actively enters a zero figure in the budget for the next quarter?

    Apart from that, if you want us to be pedantic, great. Suits me. I can file, expressly withdraw the next day, and on the first anniversary of that filing I can file PCT with a declaration of priority from the expressly withdrawn application. Is the Paris Convention priority valid? Y/N? Let’s discuss!

  37. 39

    Max, if you file a second provisional 6 months after the first one without first expressly abandoning the first provisional, and you then file a non-prov claiming priority from the second prov but the not the first, you may have a Paris Convention problem. If the existence of the first prov never becomes known to adverse parties, then it won’t matter, but technically in the situation I’ve described none of your applications anywhere would be entitled to Paris Convention priority.

  38. 38

    Yes, Inventor 0875, you’ve got it. On the button.

    But if I were you, and have enough money to contemplate filing a PCT appln at the USPTO, and can well imagine that the claimed subject matter has still not been “made available” to “the public”, I would seriously consider filing PCT including all the priority dates you have within the preceding year. From what you say about the invention “evolving” during that year, I can envisage each one of them giving rise to at least one dependent claim entitled to that prio date, in any patent that issues outside the USA.

    One thing’s for sure, if you don’t file, you can’t get any claims to issue. But, if you do file PCT, covering about 200 countries these days, you and your investors can, for the next year or two at least, pleasure yourselves enthusiastically with the thought: who knows what world-wide riches might now be achievable.

    By the way, patent terem is 20 years from PCT filing, regardless whether or not one or more declarations of earlier priority dates are present.

  39. 37

    Max, Thanks for your useful response.

    Assuming the optimizing domestic US priority case
    (e.g., will not express withdraw earlier PPA’s):

    and later find that public disclosure/leak did not occur,

    Is it possible to go PCT/foreign, without a priority claim to the US PPA’s & NonProvisional(s)?

    [PCT/foreign would have later prior art date/risk & later patent term.]

  40. 36

    Inventor 0875, I’ve got news for you. This is the dilemma inventors have struggled with, everywhere except the USA, ever since the Paris Convention was written. That was the 1870’s was it not.

    A patent attorney can advise. They have been practising the explanation for a hundred years or more, because what you are thinking is what every inventor thinks, sooner or later. Smart of you to ask here first though. It costs less. Mind you, some of the replies are not very helpful.

    If you expressly withdraw each pro before you file the next in your sequence, that will help preserve your Paris priority right. But thinking of your domestic US priority purposes, I guess express withdrawal is exactly what you do NOT want to do. Hmmmmh, a problem.

    Best forget the Rest of the World, eh?

  41. 35

    That was private pair. I can’t see the same applications on public pair. Provisional applications are not publicly viewable unless used as the basis for a non-provisional. Abandoned provisionals are not prior art, though they may point to some underlying activity that is (hence the need to prepare them carefully).
    37 CFR 1.14(a) seems imply that the PTO is not required to provide copies of provisional applications that are not relied upon for priority or incorporation by reference, etc. So perhaps the PTO is not required to keep copies. Maybe some other reg requires it, but I can’t find it quickly. If they are required to keep the abandoned provisionals, it still takes an act of Congress to for a third party to get them. 37 CFR 1.14(h). There is no provision for providing copies pursuant to a court order or subpoena (at least not in 27 CFR 1.14).
    As for using law firm records, of course it is a last resort. Funny how often it comes into play, though. Some firms destroy all peripheral evidence (anything not filed with the PTO) when the patent issues, so it won’t be available in later litigation.

  42. 34

    2) When year is up, would like an option to delay Non-Provisional, by dropping earlier no-longer-useful PPA’s in the continually improving PPA sequence. Yet, would like to have filing data of earliest useful PPA, when that is later determined.

    LOL!

  43. 33

    Dennis or others,

    I would be interested in an article & discussion of PPA strategies after AIA March 15, 2013, for small entities & independent inventors. Some of the needs are:

    1) Need to continually file new PPA’s prior to each “outside” interface/effort, where an unwanted/unintentional public disclosure/leak might occur. Say, ‘n” PPA’s in a year per evolving invention. Perhaps, a PPA at every 2-3 months or more frequently, per invention.

    2) When year is up, would like an option to delay Non-Provisional, by dropping earlier no-longer-useful PPA’s in the continually improving PPA sequence. Yet, would like to have filing data of earliest useful PPA, when that is later determined.

    3) Maintain U.S. and foreign filing options. Such as Article 4 of the Paris Convention. (e.g., see post above at Jan 02, 2013 at 07:56 AM).

    4) How to optimally reduce the attorney/agent effort/fees for the PPA sequence.

  44. 32

    Interesting possibility.

    Given AIA, good derivation support is needed by the small guy.

    Why couldn’t the USPTO be required by law to provide confidential storage of “provisional applications that are abandoned without being relied upon as a priority document”.

    Storage costs are low and are continuing to decline. “Private PAIR” could be one way to confidentially access.

  45. 31

    Thanks an examiner,

    Why would you access these unpublished documents?

    (I am focusing on the unpublished ones for obvious reasons)

  46. 29

    I don’t recall this being said here before. But that I have urged this in substance before where a patent department requires that a disclosure be sufficient enough to file as a provisional and where it is in fact filed as a provisional before being sent to a patent committee for further consideration.

  47. 28

    As far as I know examiners can access any provisional filed from the mid-2000s electronically, and can put in a request for any provisional filed before that, and not electronically available, in the old paper folders.

  48. 24

    It was enough.

    Thanks (on the other hand, both sentences are in error.

    I was trying to be nice to you. See where that got me?

  49. 23

    Rather, one looks at whether or not the specification and claim together meet the requirements.

    You really are desperate to disagree about something, aren’t you? I guess that was the best you could do – I only gave you two sentences to choose from.

  50. 22

    and even then it’s a property of each individual claim – not a property of the spec.

    Not quite right. Rather, one looks at whether or not the specification and claim together meet the requirements.

  51. 21

    Thanks Davy.

    Is that public PAIR (and this those things actually ‘published’ or private PAIR? Believe it or not this may make a legal difference (see answer below about Prior Art).

    Note too that the comment was not about what could happen – keeping careful records such as lab notebooks and provisional filings is always a best practice – the question is more directed to what the Office is legally required to do (and under what legal authority). As for ‘business records’ of a law firm, I advise you to be careful, with privilege and what not.

  52. 20

    Provisional applications which are not relied on for a priority claim don’t have 112 requirements to meet.

    It doesn’t make any sense to discuss 112 until you have a claim to examine, and even then it’s a property of each individual claim – not a property of the spec.

  53. 19

    Wonder how many of these provisional applications which are not relied on do not meet 112 requirements anyways.

  54. 18

    From PAIR, I can download images of provisionals from 2003 and onward, and PAIR indicates that earlier provisional are stored in the file repository. So it seems that the PTO does keep a copy of unexamined and expired provisionals.

    Even if the PTO does not maintain these forever, it does issue filing receipts in secure PDF, and patent attorneys that file provisionals typically keep records of those filings that would be admissible as business records, so even if the PTO does not maintain records for provisionals for long, the provisional could still be proven and would be better evidence than a lab notebook.

  55. 17

    Has the percentage of provisional applications as a total of all applications filed (utility + provisional) increased relative to, say, 2010? If so, by how much?

  56. 16

    As I have mentioned before, it is good business practice to have engineering managers authorized to prepare and file provisional applications during the R&D process. The earlier protection with earlier filing has always been good practice for protecting world-wide rights. This so called “culling” is good business management in view of the costs associated with further investing in patent protection in view of the business opportunities for licensing and the right to exclude, and in view of product development and product release plans. Not many companies can afford to protect all of their R&D efforts through patenting and large and small companies and universities all have limited budgets and therefore patent review committees. The increase in provisional patent filings and increased percentage of not claiming priority to provisionals actually reflects good and prudent IP protection business practice.

  57. 15

    I’ve seen quite a few Legal Zoom filed provisional messes lately. Considering how cheap provisionals are to file, and how low the requirements actually are, the Legal Zooms and Invent Helps out there could be skewing these statistics.

  58. 14

    Dennis, there is a good question above you might be able to get an answer to from the PTO?

    That is, how long does the PTO keep provisional applications if they are NOT cited as priority documents in a formal application? Also, how [and who] could one get a copy for derivation or other litigation purposes?

    I strongly agree that an official PTO provisional record copy would be treated by the Board or a court as far stronger evidence or corroboration, especially of their date, than a normal laboratory notebook or other internal record of a party.
    [Not that I think initiated AIA derivation proceedings, much less their successes, will be much more frequent than hen’s teeth.]

  59. 13

    Dennis, to describe what you are aiming at you could have adopted verbatim the entirety of the relevant script in Art 4 PCT (see JR below) but, heck, for me, abandoned without serving as a priority date was clear enough for present purposes (here, we don’t need to get into the all-important legal distinction between lapsed, abandoned and withdrawn).

  60. 12

    Only if “published,” and this type of application is only “published” if relied upon for priority or converted into a non-provisional.

  61. 11

    In this instance I would not be bothered to be wrong.

    But tell me, do you work at the office and can you tell with certainty that such documents – un-looked at and un-examined as they are – are kept at the office for any length of time after abandonment with no priorities claimed?

    How long are such kept?

    What legal reason would there be for keeping such?

    What is your basis for thinking that “pretty sure [I am] wrong (other than the moniker attached to the message in your shortsightedness)?

  62. 10

    I highly doubt that “the discussion will show us.”

    Still don’t see the logical basis for any dilemma yet.

  63. 9

    Actually Lexicographer, not 100% are abandoned, notwithstanding the year long shelf life. Some are converted.

  64. 8

    Lexi – What do you propose? I attempted to write somewhat carefully – writing "provisional applications that are abandoned without being relied upon as a priority document." 

  65. 7

    It makes one wonder how many of these are let go, while priority is claimed to another provisional filed within the year the first one was pending. Unless the earlier-filed provisional was expressly abandoned before the subsequent provisional, claiming priority to the subsequent provisional is not proper under the Article 4 of the Paris Convention.

  66. 6

    I didn’t say anything last time, but *every provisional application is abandoned*. 100%. Whether or not a non-provisional application is ever filed which claims priority to the provisional application. A different word choice might be better. Otherwise we start to sound like the TechDirt crowd.

  67. 4

    I am pretty sure the office does not keep a copy of unexamined and expired provisionals.

    I am pretty sure that you are wrong.

  68. 3

    Is this another? Maybe, maybe not. The discussion will show us. Writing a patent aplication is a good discipline, to figure out what the invention is and what remains to be done (as we have seen discussed in another place). Whether or not the USPTO keeps the documents, the filer has a record, and has gone through a process of memorialising what conceptions and reductions to practice have occurred. What remains to be done is clearer now.

    Bit like mailing a copyright work to yourself? Except that writing a pro costs more than a postage stamp and envelope, but is worth it if it throws up what is missing from full enablement.

    Perhaps a better record of what was invented and when than a mere Lab Notebook can provide?

    Any dilemma yet?

  69. 2

    And apart from that, a sequence of pro filings, afterwards abandoned, serves as a glorified Lab Notebook, useful if ever there is a derivation case to fight, no?

    No. No logical connection as I am pretty sure the office does not keep a copy of unexamined and expired provisionals.

    Is this another of your nonexistent “significant dilemmas?”

  70. 1

    Many predicted that in a First to File system, there would be many more early filings. But early filing means early A publication, 18 months later. I suspect many provisionals are abandoned, not because the invention was a dud but for precisely the opposite reason: the invention is showing promise, and renders the pro disclosure deficient in key aspects, so that the 18 month publication is unwanted, and outweighs the upside of the already acquired early priority date.

    In such cases, I’ll warrant there is a later pro filing, say, 6 months after the first, with a better, more enabling disclosure, of a better-defined and more useful invention.

    Or not? Who here knows the answer?

    And apart from that, a sequence of pro filings, afterwards abandoned, serves as a glorified Lab Notebook, useful if ever there is a derivation case to fight, no?

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