Provisional Patent Application Filings

provisionalcounts

The chart above shows the percentage of issued US utility patents (by issue date) that claim priority to a US provisional patent application filing.

What is your take-away?

154 thoughts on “Provisional Patent Application Filings

  1. 18

    What is your take-away?

    My take away is that this graph makes lousy evidence and leads to a lot of unwarranted speculation.

    People are jumping to conclusions not supported by the data chosen.

    The time aspect is time of issuance, which divorces all “real-time” considerations since length of “dwell time” in the Office is unaccounted for. This lack of control for timing inserts a large degree of randomness, removing the ability to make correlations.

    The other attribute (granted patents that stem from provisionals) does not speak to provisional filings except as a subset of granted patents that contain them, thus provisional filing behavior is at best a rather limited secondary effect (and one that loses meaning based on the choice of time aspect).

    This would not (and should not) make it to being admissible evidence (tends to confuse more than provide any clarity.

  2. 17

    One reason for the increase of provisional filings could be that the filing date of the provisional filing does not count in the calculation of the patent term. Therefore, patentees can get one extra “late” year without jeopardizing their right to priority. That reason would not apply to inventions with a short life though.

    1. 17.1

      It would be interesting to see a similar graph based on all abandoned applications that had a priority to provisional filings, based on application abandonment date.

  3. 16

    Does the advancement of the useful arts occur by the grant of exclusive rights to inventors, or by the publication of inventions?

    1. 16.1

      Advancement comes from publication Ned.

      The grant of exclusive rights is the price we choose to pay, for publication as early as possible, and fully enabling, across the full width of the claim.

      1. 16.1.1

        Max, well, at least the US constitution has it the other way around. It all but declares that securing exclusive rights to inventors advances the useful Arts by promoting invention. The constitution says nothing at all about requiring the inventor to publish anything.

        There is little doubt, in reality, that patent specs do little to advance the useful arts. No one, or almost no one, reads them for that purpose. What patent specs actually do is define what is being patented, limiting their scope. That is essential. It also essential to defining what the public can do free of the patent when the patent expires.

        But it is the promotion of inventions that advances the useful Arts. The idea that one’s new product or process can be protected by a patent is why provides the incentive to make the investment in the first place.

        1. 16.1.1.1

          Ned Heller, allegedly a real person with a law degree: The constitution says nothing at all about requiring the inventor to publish anything.

          It doesn’t say anything about providing anyone with any proof that you’re an inventor either. So ….?

          it is the promotion of inventions that advances the useful Arts

          That’s almost a perfect circle if we’re willing to wallow in the mud along with you. An “advance in a useful art” is, presumably, something that wasn’t already in the art. So somebody had to … make the advance. And if somebody made the advance, then somebody made it first.

          There is little doubt, in reality, that patent specs do little to advance the useful arts. No one, or almost no one, reads them for that purpose.

          Indeed. Most people just pay for stuff and then return to their jobs so they can afford to eat, feed their kids, buy health insurance, attend klan meetings, grab some p-ssy, etc.

          What patent specs actually do is define what is being patented

          Is that important? The Constitution doesn’t say anything about defining what the invention is.

          1. 16.1.1.1.1

            MM It doesn’t say anything about providing anyone with any proof that you’re an inventor either. So ….?

            it is the promotion of inventions that advances the useful Arts

            That’s almost a perfect circle if we’re willing to wallow in the mud along with you. An “advance in a useful art” is, presumably, something that wasn’t already in the art. So somebody had to … make the advance. And if somebody made the advance, then somebody made it first.

            If the goal is to seek publication of new technology, I think the framers would not have limited the issuance of a patent to inventors. Anyone disclosing new technology to the US would be awarded a patent.

            England had just such a system. They awarded patents of importation to applicants regardless that they were not inventors, but only the first to disclose in England.

            Imagine if the US system did not require the naming of inventors? Would that change anything in a first to file system?

        2. 16.1.1.2

          Ned, writings means writings made available to the public. So does “discoveries” (you know, like in discovery in litigation). Enabling disclosure in other words, to the public. Quid pro quo. The very definition of a patent system.

          It’s the “discovery” that advances the useful arts.

          1. 16.1.1.2.1

            Except it is “promotion” in the advertising sense that makes up the “quo” portion of Quid Pro Quo.

            Discovery in the US jurisprudence in this area is not in the litigation sense of discovery.

          2. 16.1.1.2.2

            Max – “writings” refer the output of authors. Inventions and Discoveries refers to the output of inventors.

            1. 16.1.1.2.2.1

              Les, I just replied. Totally anodyne. No idea why my reply “awaits moderation”. Sorry.

              1. 16.1.1.2.2.1.1

                Max – No need to apologize for being moderated for no reason. It happens to all of us.

                Making me look up words like anodyne though…

                1. Yes I did use the word Sorry. But I’m more upset than I am apologetic. I wanted you to read my stuff. Perhaps the good professor can release the blocked words?

                  I checked the meaning of anodyne. Yes, it has the meaning I intended.

    2. 16.2

      Congress could have chosen to allow patent grants to be applied for confidentially, without publication, so only the patent owner would know about the scope of the grant. Infringement proceedings could be conducted completely under seal. Publication would occur only after the grant lapsed.

      That didn’t pass the laugh test.

        1. 16.2.1.1

          When a tree falls in a forest, does the tree make the sound or does the ground make the sound? If we want to promote quieter forests, should we get rid of the trees, or get rid of the dirt?

          1. 16.2.1.1.2

            MM, If we want to promote quieter forests, should we get rid of the trees, or get rid of the dirt?

            Or get rid of auditory sensors?

          2. 16.2.1.1.3

            Or air.

            Or gravity.

            Or we can make trees and dirt transparent to each other so the falling tree falls through the “map.”

      1. 16.2.2

        MM, they did (and still do) allow patents to be applied for confidentially. They were printed on grant, but not widely published. That is one of the reasons why the patent marking statute was passed, to allow patentees to give notice by marking.

        The whole point in the beginning was to incentivize invention with exclusive rights. Publication was necessary so that the pubic know exactly what was patented — like a deed.

    3. 16.3

      I do not think advancement of the useful arts comes from the publication of applications anymore, mainly because applications do not meet the standards of technical papers, which I think are reasonable standards for insuring that publications contain useful, experience based, information. Regarding the role of the grant of exclusive rights, I have seen numerous examples where the possibility of such grant has provided an incentive to engineering management to invest in R&D. I would say this works almost as intended.

      1. 16.3.1

        anymore, mainly because applications do not meet the standards of technical papers

        When was this “golden age” of the legal document known as the specification had to meet the standard of technical papers?

        1. 16.3.1.1

          Never. But I find that in the past, applicants voluntarily disclosed more useful information. My point is that publications do not advance the arts, because there is no requirement that insures they will advance the arts.

          1. 16.3.1.1.1

            publications do not advance the arts, because there is no requirement that insures they will advance the arts

            As a practical matter I will concede that this might be a real problem in certain art units.

            As a theoretical matter, I’m left wondering what the useful, new, non-obvious, enablement and written description requirements are for if not to require that the publication will advance the arts.

            Perhaps we are really debating the meaning of the term “advance” here? It does seem possible to patent something “new” and “non-obvious” that works less well than what already exists.

            1. 16.3.1.1.1.1

              The utility requirement does not have teeth, except maybe in pharmaceutical, but it is not my area. It will be hard to give it some teeth without requiring an actual reduction to practice (currently not required).
              Only computers are impressed with the novelty, and non obviousness. People come up with new an non obvious things all the time. It is just that most of this new stuff is worthless.

            2. 16.3.1.1.1.2

              The “advance” meaning does not mean linear advance.

              That is just not the nature of innovation.

              I have discussed this previously with the contrasting analogies of a grid of streets versus a parking lot.

              1. 16.3.1.1.1.2.1

                You seem to agree that the advance of the arts requires rooting out false tracks. And you do not argue that the publication of patents helps doing that. Our positions do not differ on that point.
                You seem to believe that imagination is the bottle neck to the advance of the arts. You see value to the publication of new and non obvious ideas. I do not agree with that.
                That does not mean that I think that patents do not help the advance of the art. They do so by helping recover the cost of figuring out what works. So their value comes from the property rights they confer.
                If you want publications of patents to help the advance of the arts, you will need a mechanism to check that the statements made in them are well supported. I rarely see that in patent prosecution (sometimes in outrageous cases, and maybe in pharma where some factual support for therapeutical utility is required).
                I think that the mechanism of peer review that is used for insuring that propositions made in technical papers have good support is great, but I am not saying that the same mechanism is suitable for patent prosecution. Maybe you just need to recognize that until proven otherwise, the inventions described in patent applications are just a bunch of false tracks.

                1. PiKa,

                  You seem to have a fundamental misunderstanding of what the legal document of a patent is.

                  Your emphasis on peer review (of technical papers) would seem to place you in an academic research position (if I attempt to estimate where your bias is coming from).

                  I do not place you in industry, because your statement of pharma possessing the utility as required at time of filing is simply preposterous (and is not reflected of the reality of how many items fail to survive the FDA process).

                  I also do not place you in the actual line of work of realizing and utilizing patents, as you do not have an understanding of their basic role as a legal mechanism and the interplay of the role with the larger scope of innovation efforts.

                  Your view of until proven otherwise == false tracks is your own supposition and is simply not reflected of the patent system (or how the patent system has ever been). You want something else. Nothing wrong with wanting something else per se, but there is something wrong with not understanding the topic and confusing what you want with the system as designed to be.

                2. The argument, PiKa, is that your bias is preventing you from understanding the basics of patent law.

                  You “want” something other than patent law in place of patent law.

                  The argument is that YOU are not in the proper argument here.

                  Further, I omitted the ad hominem in addressing your evident bias, and provided rather calm and rational views as to where I think your bias is coming from.

                  I note that your response lacked any substantive comment on any of the views that I provided to you. Perhaps you want to try again and dissuade me of the views that I have presented in a calm and rational manner. Merely calling them ad hominem when they are not doesn’t cut it.

                3. Saying that I am biased is not an argument, it is a personal attack.
                  Your view is that publications advance the art. You said something about the advance not being linear, and then you made a general comment about false tracks not being reflected in the system.
                  Let me tell you then, without any unhelpful mention of where I place you, why I think false tracks are part of “the system.”
                  False tracks are the result, in part, of the requirement of non-obviousness. Inventors have heard of the obviousness law, and of things like predictable results, and reasonable expectations of success weighting in favor of obviousness. Inventors have also heard that things such as dismissal of the invention by those of ordinary skills weight in favor of non-obviousness. As a result, invention disclosures rarely contain run the mill improvements. They contain risky proposals and ideas. It is difficult for someone of ordinary skill to say whether the invention will be successful.
                  False tracks are also the results of the absence of examination of the enablement requirement. As you know, there is no obligation to reduce the invention to practice and to set forth in the application facts that support enablement.
                  Finally, false tracks are the results of an utility requirement that Has no teeth to it. As you know, there is no requirement to set forth facts that support utility ( although Canadian courts will invalidate your patent for false utility promises).

                4. PiKa,

                  Identifying your bias and why you are not grasping the argument here – and why what you instead want is something different – is very much an argument.

                  I am not attacking your character when I identify a bias that prevents you from appreciating the legal aspects here, so your opinion that what I am engaging in as ad hominem may be what you “feel” but your feelings are not in fact correct.

                  To return to your earlier statement about “false tracks,” “You seem to agree that the advance of the arts requires rooting out false tracks. And you do not argue that the publication of patents helps doing that.” – you are NOT correct that I view any granted patent – even “trivial” and “dead-end” ones as false tracks. False tracks imply a linear mindset of only one “right” track, and that is just not how innovation works. What may be a “false track” today may tomorrow – when coupled with something completely different – be a surprisingly “right” track.

                  The rest of your musings of “false tracks” clouds several different problems together (all granted patents SHOULD BE properly examined for 112 sufficiency – and that has nothing at all to do with my views of the parking lot versus grid of streets covering of innovation).

                  Your wanting to whine about “utility without teeth” merely projects a view that does not understand how low of a bar in patent law utility is supposed to be. I think this is again tied to your bias about “linear advances” and how you may think of patents as next to Nobel prizes or something (this would be wrong, even if – especially if – the Supreme Court Justices also “felt” that patents needed a Flash of Genius to actually be worthy of being granted. Congress has explicitly said otherwise, thank you.

                5. The courts did not say the same thing about the utility requirement as you did in your argument about false tracks today becoming right tracks tomorrow.

                  “[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public.” Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230.

                  The PTO is not examining the utility requirement under a standard of preponderance of evidence. That is one reason why I don’t see much value in patent publication.

                  When I mention technical publications, it is because their review process is based on a thorough analysis of the evidence presented in the paper and how it supports the conclusion. I think it would be a great process to use when examining utility (and enablement). I am not mentioning technical papers because I think the obviousness standard is too low.

            3. 16.3.1.1.1.3

              Malcolm seems to be starting to grasp a basic concept in disruptive innovation:

              It does seem possible to patent something “new” and “non-obvious” that works less well than what already exists.

              Would it be a wonder if he had actually starting reading some Clayton Christensen…?

              :-)

    4. 16.4

      Ned – perhaps both, but with different connotations for the different parts of the Quid Pro Quo deal (which serves to reinforce the notion that “more patents” (granted that meet the requirements set by Congress) are necessarily a good thing; everyone wins with the Quid Pro Quo deal.

  4. 15

    There is a perception amongst some people in the USA that, within a First to File system, you can never be too early in filing your provisional. It is wrong.

    One reason is the one given by MM (Paris, Art 4(C)4) at 911121 below.

    But that isn’t the only reason.

    It can be rather distressing, not only to lose all your own patent rights because you “jumped the gun” but also because you have i) published your crown jewels and ii) still the other fellow gets a patent enforceable against you.

    Some folks were running round almost apoplectic when the AIA came into force, supposing that one would have to file the same day as the inventor phones you, or else face a malpractice suit. But in fact, FtF is self-policing. One has to be very clear-thinking, to file at the USPTO as soon as possible, but not a day too soon.

    In this way, FtF achieves the public policy objective of a patent system, to get enablement of new technology out to the public as early as possible.

    1. 15.1

      Provisional Patent Applications are not published unless there is a follow -on non-provisional application published that claims priority to it. So, I don’t follow the reason for your assertion that it is wrong to believe it is never too early to file a provisional.

      FtF violates the public police objective of awarding to the INVENTOR exclusive rights, thereby encouraging invention and disclosure, by allowing someone who independently arrives at the previously invented subject matter to be awarded patent rights.

      1. 15.1.1

        Les, benefit accrues to the public (as you rightly acknowledge) when there is disclosure. Disclosure occurs (as you rightly acknowledge) when a patent application is published by the PTO, 18 months after the filing date. First to file is first to publish, first to disclose, first to benefit the public.

        If you, Les, conceive the same invention even earlier, but don’t disclose it till later, you bring to the public nothing that it didn’t already know, thanks to the publication by the earlier filer. Why should the public give you for your earlier conception any exclusive rights whatsoever?

        To understand the downside of jumping the gun and filing too soon, you need some acquaintance with the provisions of the Paris Convention.

        1. 15.1.1.1

          “Why should the public give you for your earlier conception any exclusive rights whatsoever?”

          Because I am the inventor and, if for no other reason, the U.S.Constitution calls for granting INVENTORS those exclusive rights, not earlier filers.

          1. 15.1.1.1.1

            My published patent application, and its non-obviousness over everything ever before made known to any member of the public, evidences the fact that I am what the Constitution visualizes as an “inventor”. I didn’t “derive” my invention from you Les. I qualify. You are not the only “inventor” Les. Even if you are an inventor, I am too, just as much as you. And I have promoted the progress, you not!

            1. 15.1.1.1.1.1

              I disagree. The act of inventing is: to produce (as something useful) for the first time through the use of the imagination or of ingenious thinking and experiment.

              If I made it yesterday, it is not possible for you to “invent” it today.

              1. 15.1.1.1.1.1.1

                Whether or not your head, Les, conceived something before mine is of no relevance to the question whether my conception was inventive. Of course it’s “possible” for my head to enjoy the same inventive insight as yours already did, 24 hours earlier than me. My thoughts today were just as inventive to me as yours were, to you, yesterday. I’m just as much an “inventor” as you.

                1. Max – Is is possible for you to invent the light bulb today? Can you invent the airplane today?

                  Of course not, those things have already been invented. Words have meaning.

                  Inventing involves being first.

                2. Les,

                  You simply are not using the term “invented” in the proper legal context. Invention requires both conception and reduction to practice. Having legal (property) rights to invention must also meet the “rules of the race” as decided by Congress (the Constitutional link is the delegation to which branch of the government the power to set those “rules of the race.”

                  Invention without needing the rules as set by Congress does not produce a legal (property) right – such only produces an inchoate right.

                3. Invention also requires BEING FIRST (to invent, not to file). No one can invent the light bulb today. Its already been invented.

              2. 15.1.1.1.1.1.2

                Do you extend that to the logical conclusion that 101’s “Whoever invents…” implies a patentability bar distinct from 102 that includes secret prior art?

                1. The patent office has to prove that its old. If someone else invented it, but kept it secret, there isn’t much the patent office can do about it.

                  If proof of earlier inventorship later emerges, that would have a bearing on validity, sure.

                2. An inventor comes to you with an invention. He tells you he told his neighbor about the invention, and his neighbor showed him proof that the neighbor invented the invention five years before him. However the neighbor never told anyone else, and never applied for a patent. What is your validity opinion? Do you really tell the inventor that his application is invalid under 101?

                3. I don’t understand your point about the Office. Validity doesn’t end at the office. Surely your objective is to get a valid patent rather than just a patent.

                4. If the guys neighbor invented the thing, then the guy is not the inventor and can’t get a valid patent, why are you calling the guy and inventor, did he invent something else?

                5. Les,

                  Your post at 9:37 am is not fully correct.

                  Someone with an inchoate right (invented but not legally made into property OR not otherwise made public) can very well be deemed NOT an inventor and can be legally and properly barred from using their own prior (but inchoate) “invention.”

                  This was a purposeful choice in patent law and is known as the “stick” portion of a “carrot and stick” mechanism to prompt people to use the patent system and to avoid Trade Secrets (which do not enrich the gen eral people as patents do).

                1. As I would point you to using a dictionary properly when it comes to understanding terms in legal context.

            2. 15.1.1.1.1.2

              Also Max, am I not a member of the public? I invented it before you did. Therefore, I, a member of the public, knew about it before you came upon it.

                1. But so what?

                  So contemplate your “yes” at 15.1.1.1.1.2.1 and evaluate this assertion of yours from 15.1.1.1.1:

                  “My published patent application, and its non-obviousness over everything ever before made known to any member of the public, evidences the fact that I am what the Constitution visualizes as an “inventor”. “

              1. 15.1.1.1.1.2.2

                Les,

                You probably should reflect on the nature of inchoate versus earned rights and the long history of the notion of racing (the government wanting inventions brought forward quicker).

                The notion of a race carries with it the notion that there is more then one person possible in that race.

                1. The race is Unconstitutional and illogical. There can only be one inventor (or group of co-inventors).

                2. Quite the contrary Les, the Constitutional grant of authority to set the rules of the race (and the fact that there can be – and often are – multiple racers) is very much properly traced to the Constitutional setting of which branch has authority to write the rules of the race.

                3. N0. The Constitution grants authority to grant exclusive rights to INVENTORS, not to earlier filers that are not inventors.

                4. What you are saying does not comport with what the law says.

                  You need to use terms as they are understood in their use as terms of art.

                  You are not doing that and instead overly fixating on a “very first no matter what else” viewpoint.

                  That viewpoint just is not correct. You are repeating the errors of the inventor Stadnick (iirc) – he lost that argument.

                5. Words have meaning. Can someone invent the light bulb today?

                  Of course not. The light bulb has already been invented.

                  The Constitution authorizes exclusivity to inventors, not to first filers.

                  YOU need to stop pretending that words mean things other than what they mean.

                6. Les,

                  With all due respect, I am not the one here having difficulty with known terms of art.

                  Maybe the name was Madstadt….

                7. Anon –

                  Ned often tells me that in the late 1700’s DISCOVERY didn’t mean discovery…. are you trying to tell me that in the late 1700’s INVENTOR didn’t mean inventor?

                  …or are you trying to tell me that it IS possible to invent the light bulb today, even though it has already been invented?

          2. 15.1.1.1.2

            Les: the U.S.Constitution calls for granting INVENTORS those exclusive rights, not earlier filers.

            The Constitution says that Congress has the power to set up a system to grant limited rights to inventors for the purpose of promoting progress in the useful arts. The details about how that’s achieved are left up to Congress, provided that Congress acts within the bounds of the rest of the Constitution (e.g., First Amendment etc).

            Suffice it to say that Congress has decided that not every “inventor” is deserving of a patent.

            Meanwhile, as we debate this oh-so-serious issue with the deeply thoughtful Les, our maniac elect is busy flushing the entire country down the t0ilet.

            1. 15.1.1.1.2.2

              MM, I assume you would not be adverse to a private meeting with 10 or 12 husky Carrier workers to explain to them just how Trump is flushing America down the toilet?

              1. 15.1.1.1.2.2.1

                Ned as Paul Simon reminded us, a long time ago, “A man hears what he wants to hear, and disregards the rest”. What Donald did for Carrier is the same as what Theresa May did a few weeks ago for Nissan, to buy from them an aspiration to stay in the North of England after BREXIT. The overwhelming majority of the British press simply celebrated the saving of jobs. That part of the press not owned by wealthy tax exiles pointed out the longer term net negative effects on employment, when all the other employers do what they need to do, to secure a relative advantage.

                Time was, when only socialist governments meddled in private industry, and for their actions were greeted with opprobrium.

                1. Paul Simon reminded us, a long time ago, “A man hears what he wants to hear, and disregards the rest”.

                  Not sure if MaxDrei grasps the irony of him providing that quote….

                2. and for their actions were greeted with opprobrium.

                  The rise of the administrative state and the “fourth branch” of the government has long been equated with s subversion of the traditional US democracy/republic with socialistic norms.

                  This country some 80 years ago or so DID take a socialistic turn. That’s just history. What we need to pay attention to in the patent sphere is the charter and power of the “fourth branch” related to patents (and realize that Tafas remains good law).

                3. Well, Max, England’s relationship with the EU is quite a bit different in kind than the US’s relationship with Mexico or China. I can see that England would want to stay in the common market but not be part of the EU.

            2. 15.1.1.1.2.3

              provided that Congress acts within the bounds of the rest of the Constitution (e.g., First Amendment etc).

              Chuckling at Malcolm’s wind mill chase of the First Amendment, the kernal of truth he shares is evident in that since Congress created patents as property (and did not change THAT aspect in the AIA), its additions to patent law must respect Constituional protections of property (due process and takings considerations).

              1. 15.1.1.1.2.3.1

                Congress has the power to burden abstractions like “intellectual property” with all caveats and restrictions And Congress has done so.

                [shrugs]

                1. You attempt to hide an elephant in a mouse hole, while ignoring the fact that Congress left the property aspect untouched.

                  Point in fact, since they did so, any new “caveats” are exactly what cannot violate the established protections.

  5. 13

    Dennis, does this data exclude the nearly 50% of U.S. patents obtained by foreign applicants claiming foreign application [rather than U.S. provisional] priority? If not, would that not nearly double the number of U.S. patents that could BE validly obtained with a U.S. provisional priority?

    1. 13.1

      Good point. Some foreign applicants might be precluded from filing first in the US under their export control laws. Or just do so for convenience.

      1. 13.2.1

        Thanks, that is certainly a greatly increased number of U.S. origin patents with provisional application priority.
        Surprisingly large considering that filing a provisional triggers the Paris Convention deadline date for filing foreign equivalent applications as well as the formal U.S. application, which thus may require their simultaneous preparation and filing.
        The other surprise to me is that this trend looks almost linear, with no big jump in provisional filings to get earlier dates for the AIA switch to “first inventor to file,” as some had predicted.

  6. 12

    Possibly this could be explained by the increase over the same time period in foreign applicants who are using the US system (US chem/bio practitioners have been filing US provisionals regularly for a long time and it wouldn’t be surprising to see foreign-based companies filing in the US adopt the practice).

    I’m not sure if the trends track or if the numbers add up.

    1. 12.1

      Yes, “U.S. chem/bio practitioners have been filing US provisionals regularly for a long time” but I was always told that was to get an additional year of patent term since the up to one year from provisional filing to formal filing does not count in the 20 years from filing date term. [Equivalent to but not additive with the up to one year from foriegn application priority filing to U.S. filing.]

      1. 12.1.1

        Yes, “U.S. chem/bio practitioners have been filing US provisionals regularly for a long time” but I was always told that was to get an additional year of patent ter,

        I know that I never told you that. That’s a side benefit.

        What happens is the inventor makes her discovery and it looks like it has a chance of being useful. So you file a provisional. It’s cheaper and it doesn’t get published. A year goes by and within that year either additional data is produced consistent with the expected utility (in which case additional provisionals are filed and converted along with the first case) or additional data shows that, for whatever reason, the technology isn’t worth the cost of pursuing further (as IP, or as a real-world product).

  7. 11

    One takeaway is that the future looks bright for patent defendants challenging validity on the basis of undeserved priority claims to hastily filed provisional applications that fail to meet the written description/enablement standards (e.g., PowerPoint presentations, scanned cocktail napkins, dream journal pages, etc.).

    1. 11.1

      Unearthing undeserving priority claims has been one of the realities of patent litigation and opinion writing since pretty much forever.

      1. 11.1.1

        I think that Robert’s comment is not meant to challenge the “been doing forever” aspect of those in litigation, but rather points out that the grounds for doing what has been done “forever,” have become more fertile.

        Or to use a different analogy, the swamp has been filling up and there will be plenty more aligators for those in litigation.

        Leastwise, that was the take I obtained from his comment.

        1. 11.1.1.1

          the grounds for doing what has been done “forever,” have become more fertile.

          If so, we should call the fire department before it bursts into flame on a hot day.

          1. 11.1.1.1.1

            Your attempted analogy does not fit, Malcolm.

            You want dessication and lack to be where an increasing abundance is the point of the comment.

      2. 11.1.2

        Yes, but Robert K S makes a very valid point that provisionals and their great increase in priority claiming make invalid priority claims for 112 support of final patent claims far more likely.
        [That is far more likely to be an issue as to intervening prior art in IPRs, rather than in trying to convince a jury that a patent claim does not have 112 support in a provisional.]

        1. 11.1.2.1

          PM provisionals and their great increase in priority claiming make invalid priority claims for 112 support of final patent claims far more likely.

          This is still just the same old issue of claiming stuff that isn’t supported by your description on the filing date, whatever that date happens to be.

          Lots of provisionals (the best ones!) are converted or relied on for priority without any substantial changes relative to the utility doc. One could take a stab at determining the percentage, I suppose, by picking a few dozen disclosures at random and comparing them.

          1. 11.1.2.1.1

            Lots of provisionals (the best ones!) are converted or relied on for priority without any substantial changes relative to the utility doc.

            Did you take a survey? What is the basis of your supposition? Personal experience? Projection of that personal experience?

            1. 11.1.2.1.1.1

              Personal experience in prosecution, and personal experience in evaluation of third party patents.

              I don’t think this is a controversial proposition. At all.

              1. 11.1.2.1.1.1.2

                Five blindfolded wisemen each hold a different part of an elephant and are asked to describe the entire animal…

                Malcolm seems to be holding the tail, and just got dumped on.

  8. 10

    Dennis, about the methodology used here to get the data: is it one data point per week (i.e. the percent of patents issued every Tuesday that claim the benefit of at least one provisional)?

    I agree with others that it would be more interesting to see the percent of non-provisional applications filed on a given date or in a given time period (including PCTs) that claim the benefit of at least one provisional, rather than looking at issued patents.

    And of course the most interesting data might not be available: the number of provisionals filed per unit time (day/week/month) over the last 15-20 years, and what percent of those eventually became the basis for a non-provisional (including PCTs).

  9. 9

    Given we now live under the yoke of “first to file” it’s reasonable and perhaps virtually mandatory that provisional applications are used to obtain the earlier conceivable filing date. For example, should practitioners file their first draft of a non-provisional as a provisional pending review by the applicant / inventors? I think so. At minimum, provisionals could be filed without paying the fee, and if review takes longer than X time, then pay the fee.

    1. 9.1

      For example, should practitioners file their first draft of a non-provisional as a provisional pending review by the applicant / inventors? I think so.

      LOLOLOLOLOLOLOLOLOLOLOLOLOLOL

      Why not go ahead and file the transcript of your first phone call with the inventor? Scan your notes in as a Figure and file those too.

      And be sure to charge the client for your time, by the way. When you get the check, cash it immediately.

      And remind everyone again: you’re in favor of patents on software, right? Just trying to keep track of the best and the brightest here …

      1. 9.1.1

        MM – your apparent axe to grind here blinds you to reasonable comments. First, you are being offensive again. Please refrain from offensive comments. Second, who says I’m practitioner? Third, assuming for sake of argument that I am a practitioner, where does my comment say that I would charge for filing the provisional application? Fourth, there seems to be a fairly big difference between a first substantive draft of a patent application and a first telephone call with an inventor. Lastly, I’m not seeing why you need to discuss software in this post, as it has zero to do with the topic or my comment.

        1. 9.1.1.1

          there seems to be a fairly big difference between a first substantive draft of a patent application [that the applicant/inventor hasn’t seen] and a first telephone call with an inventor.

          Right. The substantive difference is that the inventor knows what he told you in the phone call.

          I’m not seeing why you need to discuss software in this post, as it has zero to do with the topic or my comment.

          No, but it has everything to do with a certain reflexive mindset that treats every microscopic hoop as an existential crisis. It’s the mindset that says “nothing is eligible!” after Mayo/Alice. It’s the mindset that says “everything is obvious!” after KSR. It’s the mindset that says you have to file the Library of Congress in your IDS. And, yes, it’s the mindset that says “you should file all your drafts as provisional applications pending review by the applicant”. And all this is common to a certain class of practitioner. Use your flipping brain, man.

          1. 9.1.1.1.1

            I’m still not sure what the heck you are talking about here or why it’s relevant…ksr, Alice, etc. I’ll let our respective comments speak for themselves and the other readers can judge their value without resorting to bully tactics.

          2. 9.1.1.1.2

            Regarding your substantive comment that an inventor has not reviewed the provisional filing, I have two responses: (1) provisionals don’t require declarations, and (2) if the provisional is inaccurate then you can simply not claim priority to that document. I’m not seeing downsides here…

            1. 9.1.1.1.2.1

              I’m not seeing downsides here…

              Of course you’re not. There’s no “downside” to filing an IDS with twenty zillion references either if you’ve got the time and money. There’s no “downside” to screeching that “everything is ineligible!” or “everything is obvious” if it makes you j0lly. Go for it!

              provisionals don’t require declarations,

              That’s nice. They also don’t require claims. But I never suggested otherwise so why bring it up?

              (2) if the provisional is inaccurate then you can simply not claim priority to that document.

              It’s not that simple. See, e.g., link to natlawreview.com

              The key point, again, is that — absent some extremely compelling circumstance — a practitioner should not get in the habit of filing unreviewed draft descriptions of his/her client’s inventions (or whatever those drafts turn out to be) unless the practitioner wants to create a future mess for everyone. This would seem to go without saying. But you kinda put it out there so now I’m saying it.

                1. Well — to take just one example — there’s the future mess that starts with the client saying “You did what? Where did you come up with that?” and continues during litigation when the firm is asked to produce all the applications that were filed describing a modified doohickey or whatever the subject of the application is.

                  But just so we’re clear on what’s being discussed here: your position is that practitioners should file first drafts of patent applications as provisional applications before the inventor or client has reviewed them..

                  And you’re doubling down on this, apparently, because … you’re not an attorney? I’m just trying to keep up, you know. After all, you’re a very serious person! Super “innovative.”

          3. 9.1.1.1.3

            Its YOU that says everything is obvious….and you said that well before KSR….and it is YOU that says nothing is eligible…. and you said that way before Mayo.

            1. 9.1.1.1.3.1

              Its YOU that says everything is obvious….and you said that well before KSR….and it is YOU that says nothing is eligible…. and you said that way before Mayo.

              And now the path 0l0gical l ying.

              You gotta love the US patent attorney cr 0wd. Super serious people.

              1. 9.1.1.1.3.1.1

                Give an example of a claim that is not obvious and is eligible in your view. The record is clear. You have never seen a claim you didn’t call junk.

          4. 9.1.1.1.4

            What KSR should mean to the world is that every innovation is not a patentable invention.

            In a world where every novel act requires a filing, people become quite concerned with getting the filing done at the earliest shake of time.

            The other extreme makes sense too; the absolute blockbuster invention, where the stakes are so high that no slack may be permitted in getting to the office.

        2. 9.1.1.2

          Second, who says I’m practitioner?

          That’s actually a great point. You could just be tr0lling.

          [shrugs]

          1. 9.1.1.2.1

            Or an inventor, or a professor, or a member of the public… seems like you’re a bit off track here.

              1. 9.1.1.2.1.1.1

                A good indicator of when someone loses an argument is when they resort to personal attacks or change the subject. You’ve done both MM. Try thinking before you speak.

                1. LOL. So says the whining crybaby who immediately tried to create a sideshow when his bizarre “practice tip” was immolated.

        3. 9.1.1.3

          Yes, your comment was common sense. You need to balance (1) filing the perfect application with (2) not having your application completely knocked out by prior art filed near the same time. It seems a simple cost analysis. An extra few hundred dollars to save a month of priority is likely worth it for many applicants.

          Malcolm has been getting worse lately. I enjoy comments here, but end up skipping most of them. I’m also confused by his “sarcasm.” I often can’t tell what his actual point or position is.

          1. 9.1.1.3.1

            I’m also confused by his “sarcasm.” I often can’t tell what his actual point or position is.

            I’ll work on that. Sarcasm sometimes fails when what’s being addressed borders on the surreal. We live in strange times.

            You need to balance (1) filing the perfect application with (2) not having your application completely knocked out by prior art filed near the same time.

            Wow, no kidding. People should take a cost/benefit approach to the performance of business-related work? Really? Too bad that banality is not remotely similar to what was suggested by iit.

            An extra few hundred dollars to save a month of priority is likely worth it for many applicants.

            Again: nobody is suggesting that you shouldn’t file a provisional application if you want to preserve a priority date. The issue is should practitioners be in the habit of filing draft specifications/claim sets as provisionals without client review. If you want to go ahead and defend that as a “best practice”, then let’s hear the defense.

            1. 9.1.1.3.1.1

              Thank you for the clarifications.

              I think the sarcasm thing is hard because it’s in text. I’m sure if we were talking face to face I could tell by inflection, facial expressions, etc.

              And your clarification about “submitting unreviewed drafts” being your point instead of “filing provisionals” was helpful.

  10. 8

    This is issued patents, which introduces a powerful selection bias (namely, getting to issuance as opposed to merely filing the utility application). I wonder if filing a provisional is becoming de rigueur for ‘serious’ applications.

    Another question: are provisionals producing more, less, or the same number of issued patents that claim priority to the provisional, over time? Perhaps the graph reflects, in part, the fact that a single provisional can continue to spawn issued patents for years, so as the number of provisionals increases, the percentage of issued patents claiming priority to a provisional may likewise increase.

    That in turn leads to the question of whether the number of provisionals has been increasing. And how many issued patents the average provisional spawns.

    You started the graph at 2005, but provisionals have been available since 1995. Does the overall linear trend extend backward to 1995 or no?

    1. 8.1

      I wonder if filing a provisional is becoming de rigueur for ‘serious’ applications.

      They’re cheaper. And you can abandon and re-file after a year without publication if your conception was flawed, or if you still don’t have the money/data you need to move forward in earnest.

      To the extent that software patenting is “growing up” (before its inevitable distinction), the need for data and controlled experimental evidence to support the alleged “improvements to computing” is going to increase. Maybe someone will actually have to program something that achieves the improvements on a relevant operating system! Provisionals buy time for that.

      1. 8.1.2

        need for data and controlled experimental evidence to support the alleged “improvements to computing” is going to increase

        Spoken like someone mired in the processes of a very different art field.

        On what scientific basis do you ground your projection based on the art field you work in to the different art field?

    2. 8.2

      This is issued patents, which introduces a powerful selection bias

      Agreed.

      This then is a graph as a function of granted patents – as opposed to filing provisionals. There is just too much empty data (and time shifted/uncertain timing) data to draw any conclusions about the filing of provisionals themselves.

  11. 7

    Why the positive gradient? Two more ideas:

    1. Ever-diminishing proportion of patents issued to Applicants from outside the USA (despite ever-growing proportion of filings at the USPTO coming from outside the USA)?

    OR:

    2. Applicants outside the USA are ever more likely to file provisionals at the USPTO, to memorialise for the special US jurisdiction their earliest possible filing date.

    Both ideas a bit unlikely though, aren’t they?

    1. 7.1

      Ever-diminishing proportion of patents issued to Applicants from outside the USA …

      Both ideas a bit unlikely though, aren’t they?

      The first is not only “unlikely” but objectively shown to be false.

      The second is a supposition of which I am uncertain how it would be verified.

  12. 6

    Filing provisional application extends the patent life by one year. Hence, all applications should be filed as provisional. Arguments against this practice are procedural in nature and do not justify filing as non-provisional.
    However, some patent practitioners prefer non-provisional applications because they get to charge more fees earlier. This can serve to assess your patent prosecutor: if he/she suggests filing as non-provisional, he/she is incompetent or is greedy.
    The curve reflects the fact that the knowledge of benefits of filing as non-provisional and the realization that counter arguments do not stand to scrutiny is slowly creeping up.

  13. 5

    1. Graphing by provisional date would be easier to correlate to changes in the law etc.

    2. First-to-File is a pain in the @$$.

  14. 4

    Two guesses:

    1. Shifting Decision to File for “Barely Patentable” Inventions

    Assuming that “barely patentable” inventions are initially anyway, not necessarily worth the investment of a normally filed application, they could make up a large portion of provisionally filed applications. Slowly (not sure why) filers are shifting the decision point, of file or not to file at all, more toward subject matter more likely to be patentable (possibly learning that some simply don’t pass muster). In that way the number of provisionals filed with good subject matter could be increasing.

    2. Shifting drafting effort towards provisional application, not relying on normally filed app to “fix” or “clean up” provisional matter

    Assuming provisionals are used to save time (initially), and defer costs, they can be leaner and possibly lean enough to be dangerously insufficient. Slowly over time (again not sure why slowly and at the same rate) provisionals are being beefed up more with better disclosures to support claimable inventions, a shift in effort from the “clean it up later” regular application back to the initially filed provisional. Again this could be a result of learning that some apps that are way too lean don’t pass muster and to keep the original date have to be beefier to begin with. In that way the number of provisionals filed with good disclosure could be increasing.

    1. 4.1

      This can be consistent with the trend assuming that generally the proportion of provisionals to non-provisionals filed has not been changing, only the allowability of that for which provisionals have been filed.

      It would be interesting to know the proportion of first filed provisionals to first filed regular applications.

  15. 3

    Clients are approaching patent counsel earlier in the conception/invention process to claim priority while finalizing the commercialized embodiment during the grace period.

  16. 2

    How to explain the constant gradient? Is it a gradual steady and ongoing diffusion amongst domestic applicants and their patent attorneys that, if foreign applicants are going to get 21 years from their first PTO filing date, then we should too?

    1. 2.1

      Not sure about that, MaxDrei, as that has always been a supporting rationale (a larger timespan of data might help clarify that point).

    2. 2.2

      Constant? I see an inflection point @ 2009 and another February/March of 2014…Don’t you?

      Problem is, the variation in gap between provisional date and issue date is such that any correlation to world events is difficult to see.

  17. 1

    Interesting – I was expecting a more discontinuous blip of applicants seeking to avoid the “improvements” of the America Invents Act.

    It appears instead to be a more or less steady change (albeit, the overall use still well below 50% strikes me as low – I wonder what percentage of people are instead using the PCT entry route).

      1. 1.1.1

        That’s right – filing date anomalies are smoothed by the wide distribution in application pendency. Further, most apps that were filed as provisionals back in March 2013 are still pending.

        1. 1.1.1.1

          So the time element in the graph above is completely disassociated from the actual filing time of the provisional …

          What then is the purpose of the graph?

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