Percent of US-Originated Patents That Claim Priority to a Provisional Application

ProvisionalApps

For the chart above shows the percentage of US-originated utility patents that claim priority to one or more provisional filings, grouped by year of issuance.   You’ll note the steady upward trend – each year more US utility patents rely upon provisional applications for that effective filing date.

Note – to find US-originated utility patents I simply excluded utility patents that included a priority claim to a foreign application filing.

40 thoughts on “Percent of US-Originated Patents That Claim Priority to a Provisional Application

  1. I don’t really understand why so many provisionals are being filed.

    First – developing a full-fledged patent application really doesn’t take that long. I’ve heard clients describe their expectations that the nonprovisional drafting process, from green-light to filing, takes on average six months… I can’t even imagine what could be taking that long.

    Second – reliance on hastily-drafted provisionals to protect you from intervening disclosures or prior art is dangerous. You’re always creating the possibility that the examiner, or more importantly an infringer, will successfully claim that you aren’t entitled to priority for some critical element because the provisional was incomplete / ambiguous / etc., or because you (intentionally or inadvertently) made some language or substance change between the provisional and the nonprovisional.

    The only way to preclude that danger that is to write a very complete provisional – in which case… why not just file it nonprovisionally?

    Provisionals have two uses: (1) rush filings and (2) special cases, like incremental research, where the actual subject matter is still kind of fluid. Both should be exceptional circumstances occurring in, I dunno, 5% of cases. Nowhere near the ~50%-and-growing metric that the stats reflect.

    Anyone have any explanation?

    1. You have assumed your conclusion as to the uses of a provisional – each use of which carries with it the very dangers that you discuss.

      You also ask why file a provisional – if you have a non-provisional level of effort.

      That’s a better question, and to tell you the truth, I would spin it that (given the dangers you mention), why would you NOT file a provisional WITH a non-provisional level of effort? Filing a provisional gives you what is perhaps most important: flexibility.

      1. > Why would you NOT file a provisional WITH a non-provisional level of effort?

        Because it incurs:

        (a) An extra filing fee;

        (b) Extra costs from the practitioner in drafting and filing two applications; and

        (c) Delay in commencing examination of your application.

        Additionally:

        (d) The “are you REALLY entitled to priority?” question that I raised above. Unless your applications are letter-for-letter identical (in which case, you get *zero* benefit from filing the provisional), a gap exists. And any gap, by definition, is more of a risk than no gap at all.

        (e) Moral hazard. Clients think that they’re fully protected, and may make choices that are ultimately detrimental – such as disclosing aspects of the invention that aren’t in the provisional, and the basic human error of failing or forgetting to convert the provisional in time.

        That’s a lot of costs. What’s the advantage?

        > Filing a provisional gives you what is perhaps most important: flexibility.

        Exactly what flexibility does a provisional provide that a nonprovisional does not? Any changes you can make in converting a provisional, you can by definition also make in filing a continuation or CIP to a nonprovisional.

        There’s really nothing magical about the “provisional” label that confers more flexibility. It is purely a mirage, and one that could harm people.

        1. (a) is de minimus – consider it a small price to pay for the additional flexibility
          (b) NOT if done correctly – you are assuming that each must somehow bear a full cost, and that is just not so. Any costs associated with any upgrade is cost for the upgrade anyway
          (c) sometimes delay is desirable – that’s not a bug, but a feature
          (d) yes, but again – NOT if done correctly
          (e) Nonsequitur as this type of “moral hazard” applies to any type of patent filing.

          Flexibility has to do with the ability to change what is shared and what is not shared, what is claimed and what is not claimed. No one is saying that the “label” is magical in the flexibility provided, but at the same token, one does not get to close one’s eyes to the flexibility because of the label.

          All that I am saying is that it is another tool in the tool belt for helping protect client’s innovation efforts.

          1. > is de minimus – consider it a small price to pay for the additional flexibility

            If the flexibility is zero, “de minimis” is a synonym for waste.

            > NOT if done correctly – you are assuming that each must somehow bear a full cost, and that is just not so.

            That’s a straw-man argument – I assumed no such thing.

            Let’s say the nonprovisional costs $x to prepare. You are presuming that a practitioner is willing to file the nonprovisional for $x, *and also* file the provisional for $0.

            In order to prepare the provisional *in addition to* the nonprovisional, the firm must (a) spend more than zero minutes of attorney time to prepare the provisional, (b) spend more than zero minutes of administrator time to file it and report it out, (c) handle money to pay the fees, (d) and allocate resources to track the file and attendant documents.

            I don’t know of any firm that’s willing to take on all of those costs for $0. Do you?

            I presume that every firm will charge $y for this step, where $y sometimes delay is desirable – that’s not a bug, but a feature

            That’s part of the “specialized circumstances” I noted above. I presume that this occurs in something like 5% of cases. Perhaps a bit more, but nowhere near 47% or whatever the metric is.

            > “Moral hazard” applies to any type of patent filing.

            Not true. Here’s just one example.

            Provisionals have a hard expiration date and no notification. If you miss the deadline by one minute, you’re done. End of story.

            Nonprovisionals remain pending until you receive an office action, which spells out the reply deadline. If you miss the deadline, you can pay an extension. Even if you (unintentionally) miss *all* of the deadlines and the application goes abandoned, you can petition for revival.

            > Flexibility has to do with the ability to change what is shared and what is not shared, what is claimed and what is not claimed.

            Provisionals provide no advantage to nonprovisionals in either respect.

            “What is shared and what is not” – you have three options, none of which vary based on application type:

            (a) Allow it to be published at 18 months from the priority date.

            (b) File a nonpublication request. Until and unless the patent issues, nothing gets published. When the patent issues, the complete file wrapper is published.

            (c) Abandon before publication.

            And none of these options vary one bit whether the original filing was a nonprovisional, or whether it was a provisional with a subsequent nonprovisional conversion. They are all identical.

            Exactly how do you understand provisional filings from varying what you have “shared” vs. “not shared” in any of these circumstances?

            “What is claimed and what is not claimed”: No one cares what you have claimed or not claimed in a provisional, because provisionals are never examined. This is strictly an issue for nonprovisionals. Whether or not a nonprovisional claims priority to a provisional has absolutely no bearing on this issue.

            1. If the flexibility is zero

              Great. Flexibility is not zero.

              That’s a straw-man argument – I assumed no such thing.

              It’s not – and you did (check your words).

              You are presuming that a practitioner is willing to file the nonprovisional for $x, *and also* file the provisional for $0.

              Now THAT is a strawman argument, as nowhere do I indicate that any work is for $0. Check MY words.

              Here’s just one example.
              Your example is deeply flawed. Moral hazards still exist. The differences between provisionals and non-provisionals shows only one thing: there are differences. It does NOT show that moral hazards do not exist one to the other.

              or whether it was a provisional with a subsequent nonprovisional conversion.

              Conversion is not the only path – as indicated, there ARE options.

              No one cares what you have claimed or not claimed in a provisional

              Ah, finally a point that we can explicate further. Of course, provisionals do not have claims and are not examined. But the tie to any later non-provisional and what IS claimed there must still be able to reach back to the provisional for proper support. Your aim then of “claim” does not reflect what my words indicate. But I do grant that my words may not have been articulated well often for the point intended.

              Be it as it may, the points still remain: provisionals have their place as a tool for protecting innovation for clients. Use – (i.e., the level or preparing a provisional) may vary, but that variance does not change the possible value (if use is well done).

              Your ability to see that possible use may in fact be limited, but any such limits are within you and are NOT within the tool that is provisional practice.

              1. >

                My words were: “Extra costs from the practitioner in drafting and filing two applications.” In addition to paying $x to draft and file the nonprovisional, the applicant must pay $y to draft and file the provisional.

                I never suggested that $y = $x. That’s solely your misinterpretation. As I stated above, every firm I know that files nonprovisionals charges *some* $y, where y is greater than zero.

                But let’s get back to the main issue. As MaxDrei correctly noted, you have yet to explain, specifically, what you mean by “flexibility.” Accusing others of not being sufficiently “imaginative” isn’t going to cut it here. This is *your* concept in support of *your* argument – *you* bear the prima-facie burden of clarifying what you mean. Give us an example.

                I presume that what you mean is: “Flexibility to change the description of your invention.” And I maintain that any change – even those that appear trivial – create the risk of having your priority claim invalidated.

                Don’t take my word for it. Ask Apple what it thinks about priority claims. If you aren’t aware, Apple had a major verdict reversed in 2015 due to improper reliance on a priority claim, where the parent filing didn’t adequately support the later-filed application.

                1. I presume that what you mean is: “Flexibility to change the description of your invention.” And I maintain that any change – even those that appear trivial – create the risk of having your priority claim invalidated.

                  Certainly there is some risk. I have never indicated otherwise.

                  And change may be desired for any number of reasons – including unexpected prior art, or even simply that the company wants to go in a different direction. (Hint: if you need additional “examples” of flexibility, you are in the wrong business and should be giving your clients back their money).

                  I never suggested that $y = $x. That’s solely your misinterpretation. As I stated above, every firm I know that files nonprovisionals charges *some* $y, where y is greater than zero.

                  Here you engaged in accusing me of the very thing that you claim that I am accusing you – as I never indicated that the follow on work would be zero.

        2. Flexibility? People in Europe file with a search fee, digest the search report, then file again, before the end of the priority year, with a revised and updated patent application all set for issue.

          Why file instead a barebones provisional? Is this not just attorneys keen to “double dip” recommending it? Bill client now. Bill client all over again, one year from now?

          But they could make even more with the above-described non-pro strategy, no?

          1. Why are people presuming that I am talking about some “barebones” provisional filing when I have been more than clear that such is precisely not what I am taking about?

            1. OK, but you say that a pro is “another tool”. So what is the defining difference from a non-pro that makes it “other”?

              1. So what is the defining difference from a non-pro that makes it “other”?

                That’s not a serious question.

                That’s like saying, “there are no differences.”

                1. Flexibility, says, anon, is why one files a provisional. Flexibility, writes anon, is:

                  “..to do with the ability to change what is shared and what is not shared, what is claimed and what is not claimed. ”

                  I have yet to see what “flexibility” you have with a pro that you don’t have with a non-pro. Does anybody ever cry “Drat. If only we had filed a pro and not a non-pro, we would have the flexibility which we desperately need, and which we do not have now”. I have been filing provisionals since the 1970’s. I agree with David Stein. I suspect this mirage of extra legal “flexibility” is a figment of anon’s over-active imagination.

                2. I have been filing provisionals since the 1970’s.

                  contrasted with:

                  I have yet to see what “flexibility” you have with a pro that you don’t have with a non-pro.

                  I have to wonder – given your apparent aversion to provisionals, exactly WHY have you been filing them since the 1970’s?

                  There is FAR less “over-active imagination” on my part and far more “non-thinking” on your part.

                3. Why? Special economic/business situations. Just like David Stein avers.

                  It’s your assertion of legal flexibility, legal, that I’m asking you about. Come on, defend what you wrote. Otherwise, people might suppose that there is no defence.

                4. Special economic/business situations. Just like David Stein avers.

                  David Stein avers no such special situations.

                  Just what are those special situations? Do they involve any aspect of flexibility? Let’s see your list of “special” and I will show you how related flexibility is directly on point.

                  As I noted: There is FAR less “over-active imagination” on my part and far more “non-thinking” on your part.

                5. > David Stein avers no such special situations.

                  Scroll up to post #5:

                  “Provisionals have two uses: (1) rush filings and (2) special cases, like incremental research, where the actual subject matter is still kind of fluid.”

                  And, for a bonus, read the immediately following sentence:

                  “Both should be exceptional circumstances occurring in, I dunno, 5% of cases. Nowhere near the ~50%-and-growing metric that the stats reflect.”

                  I mean, you started this entire thread of conversation by replying to that very post…

                6. Thank you David. Exactly. I was contemplating replying along those lines. But then I thought, what’s the point.

                7. I stand corrected on the averred special circumstances.

                  Mea Culpa.

                  Be that as it may, the fact that BOTH of you are so apparently struggling with what flexibility means as to innovation development is a bit alarming

                  (well, let me rephrase that – MaxDrei struggling is not alarming at all, given that he has shown a propensity of celebrating 40 years of what he may have learned in his first year).

                  But David’s lack of understanding how flexibility can be helpful with the t001 of provisionals (and let me repeat – NOT barebones provisionals) IS a bit surprising.

                  Provisionals can be a rather easy to use place holder with the optionality of relying on them – or not. Remember, multiple provisionals can be fashioned for multiple angles of attack, and then selectively chosen as relied upon in a nonprovisonal. To do the same strictly in a nonprovisional, EACH of the different angles must be present in the single document and one runs the risk of dedicating the unused portions to the public.

    2. I’ve seen Power Point slides filed as pretty much the entire provisional. More commonly, extremely thin specifications that lack enablement and/or leave out embodiments.

      Applicant gets their precious filing date. Examiner doesn’t bother reviewing the provisional. Non-provisional gets allowed claiming benefit of provisional filing date. This is one of dirty little secrets of patent prosecution.

      Since few get “caught,” more are encouraged to file them.

      1. Now that is a cracking good legal reason to file first with a provisional. Many thanks George.

        Something for nothing. Claims entitled only to the non-pro filing date are examined on the basis that they are entitled to the filing date of a less solid pro.

        No wonder the cheap and cheerful pro filing is (for the time being) more and more popular. Pile in, until the bubble bursts. As it eventually did under the EPC in Europe.

        1. Now that is a cracking good legal reason to file first with a provisional. Many thanks George.

          Actually that is a HORRIBLE reason to file first.

          This is precisely the point that you have attempted – more than once – to ascribe to my inputs here, and for which, as David points out at 5.1.1.1.1.1.1 may bring disaster.

          But given as this very backwards comment comes from MaxDrei, I am really not at all surprised.

      2. Few get “caught” by the examiner.

        I presume that they get “caught” when they try to assert their patent against a competitor, and their patent gets invalidated due to an inadequate priority claim. If the difference is egregious enough, the patentee might even need to pay the accused infringer’s legal expenses.

        Given the anti-patent tilt to the current climate – not just at the courts, but in licensing, where competitors are less inclined than ever to license patents if they think they could escape via IPR – I presume that these scenarios are much more likely.

        Patenting is expensive. Not even the most well-funded players can afford to dodge the rules, hoodwink the examiner, and obtain patents that cannot be enforced. Apple, one of the biggest players of all, learned that lesson the hardest way possible in 2015 – one of its most celebrated patents got invalidated after multiple rounds of litigation due to an improper priority claim. No one, not IBM nor Google nor Amazon nor Microsoft nor GE nor any other major patentee, wants to follow that path.

        1. Good arguments David, but nevertheless, 95% of cases settle, and if you know from the get go that your invalid priority claim might not stand up, well then that’s just an extra nudge towards settlement.

          But first you have to get your patent to issue. And in today’s First to File world, that early priority date could be decisive.

          Once the patent issues, even with its dubious validity, you have the comfort of the Presumption of Validity, and a very heavy stick with which to beat your pesky upstart competitor into submission. That’s enough, isn’t it?

          1. To be less than cynical, what you advise here MaxDrei is unethical.

            NO ONE – not the big players and certainly not the small players – should want to follow a dubious path and rely on the gambit of “not getting caught.”

            Sure, I can see players willing to take that gambit. But that is quite aside from the discussion of the legal merits of the vehicles in place here.

            1. At last, at 08:12 this morning, some attempt to say what “flexibility” means. But if in that final paragraph at 08:12 one replaces “pro” with “non-pro” it is all still true, isn’t it? So where is the extra legal flexibility that you get by filing a pro as opposed to a non-pro?

              Unethical, to dare to claim the priority date of a thin pro? Surely not. Unethical, not to scold the USPTO for failing rigorously to examine whether the claim to priority from the pro is valid? Surely not. Unethical, to accept the patent the PTO issues you with? Surely not. So where, pray, is the unethical conduct?

              1. one replaces “pro” with “non-pro” it is all still true,

                Read again.

                1. It very much is an answer.

                  It is just not a “spoon-fed” answer.

                  Yes, you may have to actually read again the posts and understand the actual words used.

              2. Unethical, to dare to claim the priority date of a thin pro? Surely not.

                LOL – you make a two-fold error here.

                Again, my position has not been groundin “thin” provisionals.

                Yours has.

                Further yet, your ground in “thin” then carried with it the statement implicating that you KNOW that you are too thin and are claiming priority to which you are NOT entitled to.

                THAT is unethical. You may NOT claim to something to which you KNOW that you cannot claim to.

                1. My “ground” carries no such “implication”. As you, sir, will realise as soon as you pause to think.

                  Let’s try an example taken from real life, to explore the ethics and “flexibility” of the “pro”.

                  You run an experiment, and get plausible data that the disodium salt of pemetrexed is effective against disease X.

                  You file a pro to your apparently very important pemetrexed use, potentially a commercial blockbuster.

                  One year later you file a non-pro that includes a lot more data. Your extra data reveal a plausible effect also from pemetrexed as such, and also from two others of its salts.

                  Of course you include in your non-pro a dependent claim directed exclusively to use of the specific disodium salt.

                  Who can reasonably deny that the pro can legitimately be characterized as “thin”?

                  Who can reasonably deny that, if the claim in the issued patent to disodium is not (for some other reason) invalid, then it is entitled to the date of the pro?

                  So, anon, in seeking to bring maximum benefit to your client, from its heavyweight non-pro, is it “unethical” to invoke the filing date of the comparatively “thin” pro?

                  But suppose, instead, you had initially filed a non-pro and, one year later, a C-I-P. Interesting for me would be any initial presumption (alluded to elsewhere in this thread) that, if it’s a C-I-P, then the disodium claim is NOT entitled to the early date but, if it’s a pro/non-pro combo, then it is. Why interesting? Because it might explain why everybody is so keen, these days, on filing provisionals.

                2. My “ground” carries no such “implication”. As you, sir, will realise as soon as you pause to think.

                  It does because you have repeatedly made comments as to provisionals being “thin.”

                  I have paused.
                  I have employed critical thinking.

                  It is your turn to do the same.

                  If you can.

                  My statement stand – and stands correct.

  2. Do we have the data split across the various entity types? I am curious as to how many large companies do high-quality provisional filings to delay prosecution and extend patent life.

  3. I wonder what is the corresponding percentage in the UK, where, since time immemorial, the filing of a provisional has been the first step for UK Applicants travelling the path to issue.

    I bet the UK curve would be downwards, not ascending, the trend being driven by the harmonisation of First to File patent law in the 1970’s.

    So I expect the Dennis curve, if continued on for the next 20 years, also to peak and then decline.

    1. So I expect the Dennis curve, if continued on for the next 20 years, also to peak and then decline.

      Why?

      The only indication in your post is your rather (in)famous “I am wearing my Euro glasses and these glasses must work for you too.”

      It truly is a bizarre expectation to read out into 20 years ANY kind of trend on US (sovereign) provisional practice.

      1. Why? Because of a slow dawning appreciation amongst Applicants in any First to File jurisdiction that a provisional will not be enough to secure for that vital issued claim (on which the litigation turns) a validity-defining date which is the date of the first PTO filing (as opposed to the PTO non-pro filing one year later).

        I’ve been through this in my long years of practice and have no reason to doubt that the same inescapable logic of “First to File” will commend itself to the courts of the USA, sooner or later.

        1. that a provisional will not be enough to…

          That entirely depends on how that provisional is actually written.

          MANY provisionals would indeed corroborate your view – but then again, many provisionals are simply not written properly and instead proceed under a view that one can “successfully” file an envelope filled with grass clippings as a provisional.

          Others that take a different view of provisionals (and the proper way of writing them) will recognize that your attempted conclusion is simply not a necessary one.

          All of which of course still provides you no basis for making any such prediction for how patent law will be in 20 years.

  4. Does this trend hold true across all technology fields? Or are certain technology fields relying more on provisional patents than others?

  5. “For the chart above shows the percentage of US-originated utility patents that claim priority to one or more provisional findings”

    Dennis – I think you meant “filings,” not findings.

    Also, I assume the dates across the bottom are Utility Application filing dates, rather than the dates of the provisionals or something else. Is that correct?

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