A Million Inventions Lost: Abandoned Provisional Applications

by Dennis Crouch

US provisional patent applications continue to be popular, with about 170,000 filed each year since 2013.  After filing a provisional, the applicant then has one-year to move the case to a non-provisional or PCT application, and eventually toward patent issuance.

If the applicant does not follow-up with these next steps, the provisional application is abandoned, and the file kept secret. About 40% are abandoned — and that adds up to 1.4 million application files lost to the public.  As you might expect, the abandonment rate depends upon the type of applicant:

  • Micro Entity: 78% Abandonment Rate
  • Small Entity: 44% Abandonment Rate
  • Large Entity: 25% Abandonment Rate

There is a good amount of talk about patent grant rate — what percentage of patent applications eventually end up as issued patents. In general though, I have never seen any grant rate calculation take these abandonment numbers into account.

I was considering calling for a new publication regime; Something along the lines of amending Section 122 with a statement to the effect that Any application that has not already been made publicly available 5-years after its effective filing date will be published by the USPTO.  My problem with an immediate call for publication here is that we cannot really tell whether these abandoned applications include any of the shoulders-of-giants that future innovation might stand upon.  Does a public interest in this unknown information outweigh the private benefit that the patent applicants receive by secrets kept.  Although these applications are all secret, the USPTO does have the power to conduct a study on the files to begin to help us understand their value. We’ll see if I can push the agency in that direction.

75 thoughts on “A Million Inventions Lost: Abandoned Provisional Applications

  1. 22

    This idea will be a disaster in the life sciences/chem. Many provisionals are abandoned because of a lack of the data needed to support a PCT filing. Research doesn’t always fit neatly into the 12 mth period between prov and PCT. Researchers can lose funding, move to a different University, get ill, or quite simply the experiments don’t work out or are much harder to complete than was planned. Also, Dennis’ concern about wonderful inventions being buried in unpublished provs is largely irrelevant in this field. Most research eventually gets published in scientific journals anyway, so why the need to publish provs?

    1. 22.1

      I have to wonder (because Malcolm disappeared without clarifying) if this type of “filing without actual possession” that you indicate with a need for actual later support to be obtained is what Malcolm was referring to as that “hidden 112 problem that Pharma does not talk about.”

      Of course, actually having possession (instead of merely having a research plan) might alleviate the concern that you seem to be expressing.

  2. 21

    What happens is that we file provisionals and then evaluate whether the provisionals should be turned into a utility application.

    1. 21.1

      Exactly. Like, what Britons have been doing for more than a hundred years. Remind me, in what year did the Paris Convention come into being? Eighteen eighty something, wasn’t it?

  3. 20

    Hey Dennis,

    I enjoyed your provisional application analysis in today’s patently-O blog. You mentioned that you never see any grant rate calculation take abandonment numbers into account. This is not true.

    I have published an article: Three New Metrics for Patent Examiner Activity: Office Actions per Grant Ratio (OGR), Office Actions per Disposal Ratio (ODR) and Grant to Examiner Ratio (GER). 100 Journal of the patent and Trademark Office Society 277-319 (2018).

    link to papers.ssrn.com

    The “Office Actions per Disposal Ratio (ODR)” score directly addresses your concern.
    ODR = Office Actions / (Grants + Abandonments). The ODR score gives the rate at which most examiners obtain either an abandonment or give an allowance. See figure 14 of the paper.

    This is only one of the three new metrics that I describe in the paper. I think each of them can be used as different (better) tools to measure pendency and allowance rates.

    I just wanted to tell you that this is something that I did think of a while ago!

    Best,

    S. Sean Tu

    1. 20.1

      Tu,

      I believe that the good professor was explicitly (and only) referencing provisional applications (which will NOT be a part of your analysis).

  4. 19

    Re: “..Claims don’t need to be drafted” for a provisional. Yes, claims are not required by the USPTO in a provisional application. But that can risk an inadequate 35 USC 112 “description of the invention.” Also, loss of priority benefit for an equivalent EPO or other foreign application per statements from foreign associates. Both can make intervening publications or seminars fatal prior art. [Given the total foreign market and manufacturing potentials now being greater than for just the U.S., shouldn’t universities be more concerned about loss of foreign patent rights?]

    1. 19.1

      I was taught nearly 20 years ago to include at least one omnibus type claim just for these purposes.

      1. 19.1.1

        “I was taught nearly 20 years ago to include at least one omnibus type claim..” Interesting, since I was taught 58 years ago that omnibus claims are old fashioned, improper and ineffective.
        So I guess the question should be: are there any legal decisions in modern times where an omnibus claim made a winning difference?

        1. 19.1.1.1

          Nope. A placeholder claim, even an omnibus claim, gets the job done. Find case law saying otherwise, and stop being a pompous phallus.

          1. 19.1.1.1.1

            Paul may have “been taught”58 years ago, but has — by his own decision — removed himself from the roles of a practitioner (no longer with an active USPTO number).

            He tends to forget that in his haste to preach to his current agendas.

          2. 19.1.1.1.2

            Paul asks the question, whether universities in the USA, that file patent applications, should value at greater than zero the usefulness of benefitting from Paris Convention priority for their filings at the USPTO before they file PCT. Consider for example the mother of all Paris Convention priority battles going on, as we speak, between the various CRISPR-Cas9 protagonists, not only at the USPTO but also at the EPO (where patents for a 600 million consumer unit market are issued).

            Paris restricts the benefit of priority rights to earlier patent applications for “the same invention” as the one defined by the claim at bar. Ask yourself: how do courts all over the world decide whether the US pro is an application for protection of the “same” invention (inter alia, at the same level of abstraction as we find in the claim at bar)?

            I don’t know what “job” you think an omnibus claim gets “done” but I can tell you that outside the USA it’s useless for all purposes, OK?

            1. 19.1.1.1.2.1

              From my experience it is more whether whatever it is you are claiming is supported by the provisional. Does the disclosure support the claims at the EPO.

              I’ve never had anyone say they aren’t the same invention or that the claims of the provisional were different than the claims at the EPO. I have had the EPO say that a particular aspect of a claim is not supported by the provisional.

              1. 19.1.1.1.2.1.1

                Night, yes, of course. Support there must be. Absolutely. That’s what it’s all about.

                But that just begs the question, in that it all depends what “support” means, under the EPC. For “same invention” see G2/98 (link below). G numbers are Decisions of the EPO’s top level Enlarged Board of Appeal.

                The UK has had provisionals for more than a hundred years, and under Paris, under the PCT, under the EPC, there is no requirement for claims in the pro.

                link to epo.org

          3. 19.1.1.1.3

            An omnibus claim is better than nothing, but Paul is correct that it will not do the job of preserving your rights to amend claims as necessary in the pull and thrust of EP (or CN, or JP, etc) prosecution down the line. For that, you need a real claim set (or pseudo-claim set) with multiple dependency built in.

            If you try to say to an EP examiner “my omnibus claim clearly and unambiguously captures this precise combination of elements in the amendment that I am proposing,” you are laying yourself out for an expensive fight with disappointing results.

            1. 19.1.1.1.3.1

              It has worked for every applicant I’ve ever represented in the last 20 years, including each and every one I’ve ever helped obtain foreign rights. The EPO has never objected to a claim presented in a PCT because a similar claim was not present in the PRV. Patent practices is full of these myths based on neurotic beliefs passed down from practitioner to practitioner.

          4. 19.1.1.1.4

            For those interested in substance rather than unprofessional insults, see, e.g., MPEP 2173.05(r) “Omnibus Claim [R-11.2013]” [whereby such claims do not normally remain in U.S. patents as issued] and note the absence of any Fed. Cir. authority to the contrary as to such claims satisfying 35 U.S.C. 112:
            “Some applications are filed with an omnibus claim which reads as follows: A device substantially as shown and described. This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is indefinite in that it fails to point out what is included or excluded by the claim language. See Ex parte Fressola, 27 USPQ2d 1608 (Bd. Pat. App. & Inter. 1993), for a discussion of the history of omnibus claims and an explanation of why omnibus claims do not comply with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Such a claim can be rejected using form paragraph 7.35. See MPEP § 706.03(d). For cancellation of such a claim by examiner’s amendment, see MPEP § 1302.04(b).”
            As also noted, since such a claim is to anything and everything in the specification, it also fails to provide an adequate 35 USC 112 “description of the invention.” Also, is this not claiming invention of those parts of the specification which are not the invention of the inventors?

            1. 19.1.1.1.4.1

              You do realize Paul that you are referencing omnibus claims in NON-PROVISIONAL cases – as opposed to omnibus claims in PROVISIONAL cases, eh?

              (this is merely a professional courtesy – as opposed to any unprofessional insult)

              1. 19.1.1.1.4.1.1

                Yes, and I hope there is no argument that one does not get a valid priority date benefit for a provisional application that does not meet the defined 112 requirements for what is later claimed in the utility application and patent?

                1. Certainly not from me.

                  The point of the ongoing conversation above though has to do with whether or not (and what degree) claims in the provisional application have as an effect on that support for the non-provisional application.

                  Your insertion of types of claims in the non-provisional application have no bearing, and only serve to diminish your comments.

                  Professionally, of course.

                2. That being said, I am in the camp that provisional applications should be drafted with claims (and with the same attention as a non-provisional application — at least as much as possible).

                  It is when claims are actually focused upon, that the drafting of an application obtains the support that may later be necessary. One may (or may not) choose to include the claims in a provisional. We generally do not, but instead convert the claims into “proper English form” and include in the detailed description.

                3. You’re conflating the application as a whole with the claims.

                  Again, I’m happy to read any cases you have where this has EVER happened and resulted in invalidation of a patent. Examiners look for 112 support in the spec, not the claims of the PRV.

  5. 18

    Can’t remember. What are the rules for a provisional and PCT. If you abandon the provisional can you still file a PCT that doesn’t claim priority to the provisional more than a year after the provisional was filed?

    1. 18.1

      AFAIK, yes unless you had another barring event occur during the time frame after filing the PCT. the only issue I can think of is that the mandatory publication of the PCT might show an erroneous priority claim. I’m not sure if that gets remedied at the national stage level. I assume it would.

      1. 18.1.1

        Sorry I see you said BEFORE Pct filing. Again, yes assuming all the other requirements are still met. There is no requirement to claim priority to a PRV. The PRV is not public knowledge.

    2. 18.2

      Night, have a look at the Paris Convention, Art 4(C)(4). Paris (not the PCT) sets out your right to benefit (or not) from the priority of an earlier filing that was not the first application to protect that invention in a Convention country

      Is this what you have in mind?

  6. 17

    The problem with the proposal is that while the quid pro quo of the patent system (protection, however only prospective, for disclosure) doesn’t apply to an abandoned provisional. I cannot see how the mere filing of a provisional application to retain the right to file a utility application within one year is sufficient for an applicant to give up title to her invention if she decides not to proceed to pursue patent protection. It may be that the innovation is better protected by trade secret, which is the inventor’s right (along with the risk of later disclosure and loss of trade secret rights). Forcing disclosure, on whatever timeframe, could push some (including large companies with the economic wherewithal to defend their trade secrets) to eschew the patent system, a trend that in some industries the subject matter eligibility case law is already promoting. This is hardly consistent with the Founders’ belief that the basis for patent law is to promote progress.

  7. 16

    My first problem with this item is that I have no idea which dataset it was derived from. I would have like to see what the definition of “abandoned”. I did look-up the USPTO web site, but without much success.

    I’m all for broadening the body of published prior art, but in this case I don’t think this is a good idea at all. The main reason is that it could very well wreck the international priority system for many US applicants.

    The text of Article 4(c)(4) of Paris Convention of 1883 (as last revised in 1979), in its English translation, is a good starting point to understand why:

    A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

    Applicants frequently file multiple priority applications within the one year Paris window describing incremental improvements to an invention before committing to the “big one”. To paraphrase, “file early and often”.

    For example, the Broad Institute claimed in WO2014093712 (a key application in the tight race to control CRISPR) the priority of 12 different US provisionals. Opponents scrutinised the paperwork, and discovered that one of the US inventors hadn’t properly assigned his rights to Broad before the PCT application was filed. (A key difference between US and foreign law is that in the US, the right to priority is vested in the inventor, where elsewhere it is the identity of the applicant that is determinant. The text of the Paris convention allows both interpretations. Trying to explain this to US applicants can be difficult.) Since priority was invalid (transfer of title cannot be retroactively repaired), European patent EP2771468B1 was revoked, and the decision confirmed in BoA decision T 0844/18.

    Anal-retentive jurisdictions such as the EPO will also look into whether the priority application is really the FIRST application in the sense of Article 87 EPC, which closely mirrors Article 4 of the Paris convention.

    If an application from the applicant is discovered that was filed earlier than the claimed priority, then priority is denied, and intermediate prior art, including from the applicant himself, can be raised against the European patent. (EPO Guidelines for Examination F-VI-1.4: “First application”)

    So, if such a proposal was actually implemented, an applicant who diligently files provisionals for successive improvements during the development race may well find himself haunted by his earliest efforts. The belated publication of provisionals would thus constitute a time bomb. This could easily happen if the R&D effort lasts longer than one year.

    Applicants relying on foreign first-filings (which would remain confidential if abandoned) would be at an advantage in both the US and abroad against US filers of provisionals. (And the requirements for obtaining a filing date in many important foreign jurisdictions are about as low as they are for a US provisional, thanks to the Patent Law Treaty, which was largely a US project.)

    The publication of abandoned US provisionals would also raise another issue, viz, under which section of 35 USC 102 (a) or (b) would these publications count as prior art?

    Finally, what form should a provisional publication take?

    Since the documents can be pretty much in any form, and even any language, a nice typeset pamphlet like in regular US “A1” Patent Application Publication would be difficult.

  8. 15

    The “one year” bit is hard on us in the pharmaceutical trade – most clinical trials take much longer than that – it can take a year just to get past step one, approval on the ethics of the trial design.

    1. 15.1

      Pharma companies really seem to be hurting.

  9. 14

    I’m surprised that nobody thus far has mentioned why provisional applications were introduced in the US in the first place. It was primarily in response to the TRIPS harmonisation of patent term to 20 years from filing. The US realised that foreign applicants claiming priority from a non-US application were effectively getting the benefit of an additional year on the end of the patent term. Provisional applications enabled US applicants to secure a priority date without commencing their patent term, thus obtaining the same advantage.

    There are other jurisdictions (including Australia) that provide a provisional application system, and all of them guarantee that a provisional that is not used as the basis for a priority claim will expire after 12 months, and never be published (because 12<18).

    Furthermore, it remains possible for applicants who are only pursuing US patent rights to request non-publication of their non-provisional applications until and unless they are actually granted. The idea that an associated provisional application could be published regardless is absurd.

    Dennis, your proposal is so far off-base I can't help but wonder if you really gave it any thought before you hit the post button. I think you have more than adequate feedback in the comments here to indicate that you should abandon your plans to 'push the agency' to investigate your ill-considered proposal.

  10. 13

    Based on my experience, provisional applications become abandoned (and, just to be clear, by “abandoned” I interpret that to mean the provisional application expired after one year without a non-provisional application having been filed claiming the benefit of the provisional application’s filing date) for so many reasons that there is no simple explanation.
    Inventors have allowed a provisional to expire without filing a non-provisional because they could not afford to file the non-provisional prior to the anniversary of the provisional application’s filing date. However, not having the money did not stop them from having enough to re-file the provisional! Do the statistics take into account that large numbers of the abandoned provisional applications could simply have been re-filed?
    Inventors have allowed a provisional to expire because it was absolutely worthless in terms of disclosure because they tried to do it pro se either by themselves or got taken in by a business that exploits wannabe inventors.
    Inventors have allowed a provisional to expire simply because other things were going on in their lives. They have the money but not the inclination to deal with filing a non-provisional. If you are taking care of a dying parent or sick child, filing a non-provisional application falls to the bottom of the list of things to do.
    The list goes on.

  11. 12

    “I was considering calling for a new publication regime; any application that has not already been made publicly available 5-years after its effective filing date will be published by the USPTO.”

    This is a terrible idea for a variety of reasons.

    Applicants file provisional applications in order to preserve the option to convert at a later date. That decision is: “Do I want to pursue patent protection, or do I want to keep the invention as a trade secret?”

    This suggestion changes that calculus to: “Do I want to pursue patent protection, or do I want to keep the invention as a trade secret until the PTO publishes my provisional in four years?”

    This change would force inventors to commit to losing trade secret protection at the time of filing the provisional – and irrespective of the outcome of the patent process. That’s a very heavy decision, especially within the last-minute circumstances in which many provisionals are filed in a world that is (1) first-to-file and (2) subject to the EPO zero-day grace period, where inventions are irrevocably abandoned if an application is not filed before public disclosure.

    Two additional questions about this proposal:

    (1) Is this suggestion intended to be retroactive? Seems so, from the tone of the post. This would be grotesquely unfair to applicants of the past who deliberately chose not to convert in order to rely on trade-secret protection under the guarantee of nonpublication!

    (2) Is it deliberate that this proposal does not mention nonpublication requests? Because it appears that applications with nonpublication requests that are converted and then abandoned, or that remain stuck in extended prosecution (possibly due to an appeal, in view of the persistent years-long PTAB backlog), would be published at the five-year mark. Again, it would be grotesquely unfair to revoke – retroactively – the protection guaranteed by nonpublication requests.

    1. 12.1

      I hear you.

      To me as well, this simply smacked of an UNTHINKING view that ‘of course, the public should get all of this’ — which is doubly surprising as it comes from a patent law professor.

      1. 12.1.1

        Public disclosure is the tradeoff for getting an ISSUED patent, not merely filing an application. We don’t promote the arts and sciences by asking people to fork over ideas for a shot at getting a patent. If the USPTO was a fair organization that didn’t have art units where examiners have single digit allowance rates, while others in the same art unit are nearly rubber stamps, maybe some people would trust more. Or maybe get rid of examination processes where allowanced are pulled by phantom “review panels” (which I just encountered last month).

        1. 12.1.1.1

          Plus One

          Billion.

          1. 12.1.1.1.1

            Plus one billion too.

        2. 12.1.1.2

          ” Or maybe get rid of examination processes where allowanced are pulled by phantom “review panels” (which I just encountered last month).”

          BB: I thought those days were long gone.

          If I may ask: Did “they” come back with (new?) 101, 102, 103, and / or 112 rejections?

          How did they label their OA pulling of your allowed app?

          Thanks.

          1. 12.1.1.2.1

            I had an office action where all claims were allowed but for filing a TD. TD filed and a new non-final was mailed. Examiner put into the record that “multiple errors” were identified in their office action. Of course they did not put into the OA who found these errors. When I telephoned for an interview, Examiner admitted that a review panel pulled the allowable matter, forcing them to enter new (and completely baseless 112 rejections) as well as reenter a new 103 rejection with the same art.

            1. 12.1.1.2.1.1

              Lest we forget, SAWS — at the time that its existence was finally admitted to and canceled — was admitted to being but one of MANY such shadow programs.

              See also (or perhaps, especially) 37 CFR 1.2.

            2. 12.1.1.2.1.2

              Thanks BB.

              Anonymous “review panel?” Sounds like SAWS 2.0 to me.

              Hope you can traverse the new baloney.

              Sounds like it’s time for another PTO FOIA request.

            3. 12.1.1.2.1.3

              I was recently told that an OA had a panel of 5 primaries review the OA and they came to the conclusion that the 101 rejection was a good rejection. The examiner said based on the review panel that there was no way he could ever remove the 101 rejection.

              Appeal or abandon.

              1. 12.1.1.2.1.3.1

                But note that there is nothing in the written record that says that a quality review board reviewed the OA and determined it to be a solid 101 rejection (the only rejection remaining.)

                It is very much like the secretive processes of the past. The examiner isn’t going to budge because of what others have said and you can’t talk to the others.

                1. Yet aagin (with emphasis):

                  link to law.cornell.edu

                  § 1.2 Business to be transacted in writing.

                  All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action

                  of the Patent and Trademark Office

                  will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

                  Thus, ANY action by the Patent and Trademark Office based on ANYTHING not on the written record is ultra vires.

                  This most definitely means all of those at the Office operating in the shadows.

              2. 12.1.1.2.1.3.2

                “I was recently told that an OA had a panel of 5 primaries review the OA and they came to the conclusion that the 101 rejection was a good rejection.”

                The only official process I can plausibly match this to is a signature review panel. However that’s about judging Examiners for promotion rather than Applications. It should absolutely not be used as a factor in maintaining a rejection.

                1. Also, FYI:

                  If it was reviewed on a signature panel, then the examiner’s SPE already had a chance to review the rejection. Assuming the examiner is correct that the whole panel supported the rejection, you can pretty much count on the SPE also being a vote for “send this rejection to the board.”

                  Not to suggest that you shouldn’t appeal, but you probably shouldn’t expect prosecution to reopen.

                2. The only official process I can plausibly match this to is

                  Says the examiner who forever and a day denied the existence of SAWS.

                  Ben, you have zero credibility on this topic.

                3. “Ben, you have zero credibility on this topic.”

                  You believe the PTO has ongoing secret review programs that harm applicants… and how many FOIA requests have you submitted?

                  You have the credibility of a Fox News anchor who fosters vaccine doubt but got their jabs as soon as possible.

                4. I believe the direct words of the admission of the Patent Office when they finally admitted that SAWS was a real program.

                  Your “that’s a conspiracy theory” motif of likening me to Fox news falls flat.

  12. 11

    A number of inventors are allowing their provisional filing date to lapse so they can hold their invention as a secret as we work to restore integrity to the U.S. patent grant.

    1. 11.1

      …staged (and repeated0 placeholders….? (while hoping for SOME sign of emerging sanity?)

  13. 10

    Frankly, I do not see what is so surprising about these stats. They look to me about right. Bear in mind that most PCT applications filed at the China Patent Office get published as a WO but then go no further forward. They have served their (defensive) purpose by then. Similarly, filing a provisional fulfils Ground Rule No. 1 in any First to File jurisdiction “Tell the Patent Office before you tell anybody else”. Hardly a surprise 8is it) that when you “Tell somebody else” you fuind out that going forward with the patent application will be i) a waste of money and ii) tell the public what is commercially better kept under wraps.

    Unlike so many stats, these ones suggest to me that the patent system is working as it should be working.

    The answer to the Dennis question is a clear NO. If Applicant wants the content of its pro published, it has no difficulty in achieving that objective. Most of the time a pro is not pursued, however, there would be in its publication by the PTO no benefit to the public but there would be harm done to i) the Applicant and ii) the confidence the public has in the patent system.

    1. 10.1

      Unlike so many stats, these ones suggest to me that the patent system is working as it should be working.

      Nothing like a comment from MaxDrei to make wonder just how he is botching this topic…

      As it is, when even someone from a Foreign Sovereign whose Quid Pro Quo is not as beneficial as the US Sovereign’s Quid Pro Quo (that is, here, we do NOT trade the Quo of an application for a mere chance at being examined), can see the natural benefit of a beginning process in confidence, one has to wonder how in the world are the new US attorneys overcoming the drek that they are being exposed to in law schools…

  14. 9

    It is possible that a great number of those abandoned provisional applications lack novelty or nonobviousness and would not be of much value to the public. Once a provisional applicant performs a novelty search, many of them may find that their supposed ‘inventions’ are not really patentable or find that the available scope of patent protection is very narrow and therefore not worth pursuing any further. The filing of a provisional application allows them to lock in a priority date without much expense and then take the time to fully explore their options.

    1. 9.1

      While I certainly see your point, the view of provisional filing as something “quick and dirty” IS something that I seem to perpetually be educating inventors about.

      ANY “lock in priority date” is ONLY as good as the material being submitted rising to a level that would support a true non-provisional. The idea that one CAN skimp on expenses because “it is only a provisional” is a dangerous idea. Skimp too much and you basically have thrown away even the small(er) amount of that provisional.

      1. 9.1.1

        I agree that great care is always needed in advance of filing a provisional application. One doesn’t simply file whatever an inventor provides without reviewing to check for an enabling description. The priority benefit under 35 U.S.C. 119(e) is only available “for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode)” in the provisional application.

        But there is a difference between ‘without much expense’ and ‘quick and dirty’. The latter is clearly careless and even malpractice. A review of the subject matter content of a potential provisional application filing for legal sufficiency is always necessary. Areas of incompleteness in the disclosure may need to be supplemented before filing. That does not negative the value of provisional applications as a way to preserve rights to priority while options are being explored.

        Claims don’t need to be drafted. Drawings don’t need to be formalized or even separated from the textual matter. The arrangement of the technical content can somewhat disorganized, as long as it isn’t totally confusing. The basic formatting requirement is simply one of legibility.

        1. 9.1.1.1

          At least two of our clients does their own provisional filings (these are not small clients).

          Actually checking (as you note) is most assuredly NOT done.

          I will also disagree (although I do hold that this is an item that different views may well exist) on the drafting or not of claims. While certainly provisionals have no claim requirements, I have found that not bothering with claims almost guarantees that the provisionals are more sloppy than what I consider to be a quality job. Part of the art of drafting (and drafting for quality) has always been the “cross-check” and interactions between the major elements (of a non-provisional) in that the claims, the figures AND the specification are woven together. Sure, informal drawings are low hanging fruit, but merely aiming ‘for legibility’ is — to me — an invitation for disaster.

  15. 8

    It’s likely that the vast majority are from Universities. They file provisional applications based on the professors telling them that a publication is happening tomorrow. No time to do a patentability evaluation – file a coversheet provisional application. Thereafter, its determined that the paper is about a law of nature or some other reason that makes the disclosure of the provisional application unpatentable and/or anything patentable would be so narrow in claim scope that its not worth paying for the cost of preparing a fully drafted application.

    1. 8.1

      Good point about universities rush filing mere copies of technical publications as crude provisionals and then abandoning them. Many universities apparently qualify for the [heavily financially subsidized by all other applicants] very cheap PTO fees for “Micro Entity” status as an “institution of higher education” under section 101(a) of the Higher Education Act of 1965 if they are non-profit and not foreign, no matter how huge they are. So universities must comprise as substantial percentage of those nearly 80% provisional abandonments by “Micro Entities.”

      1. 8.1.1

        good points both of you

        1. 8.1.1.1

          Agree on those being good points. Would be nice to know whether or not it’s correct.

          Institutes of education, however, should not be entitled to “go micro”; small is good and enough.

  16. 7

    “There is a good amount of talk about patent grant rate — what percentage of patent applications eventually end up as issued patents.”

    I don’t remember many such conversations here. And I’m not even sure what there is to be said. Do you guys really want the grant rant to go up from the current 70-80%? How will it look if the Office is granting 99% of applications? That seems like the sort of thing that could raise public ire.

  17. 6

    Our consumer awareness campaign is taking effect. Inventors are learning that U.S. patents are fraudulent and that the USPTO will take them back if they ever attempt to use them. Inventors are crazy but not stµpid.

    1. 6.1

      Exactly. Micro entity filers are mostly wasting their money by filing at all. At least if they fail to convert at the end of the statutory year, they are limiting their losses.

      1. 6.1.1

        Big Pharma-speak translation: get out of our sport of kings.

  18. 5

    I think publishing provisionals would be a terrible idea. In some cases an inventor (or a company) is trying to decide between a patent and maintaining a trade secret. Nonpublication gives them time to do that while assessing the value that both options present. Publication after five years would effectively kill that.

    1. 5.1

      The choice between obtaining a patent and maintaining a trade secret has several risks. One not always considered is whether or not one can wait said five years to still apply for a patent on an invention commercially used for said five years to make commercially sold products. That entirely depends on a judicially untested argument that the AIA overruled the long-standing J. Learned Hand Metalizing Engineering equitable estoppel doctrine and its adoption by the Fed. Cir. [An argument made by the same folks that had also argued that the AIA had eliminated secret sales from the 102 “on sale” bar and 103 prior art until that was rejected by the Sup. Ct.]

      1. 5.1.1

        that had also argued that the AIA had eliminated secret sales from the 102 “on sale” bar and 103 prior art until that was rejected by the Sup. Ct.]

        One HUGE “missing context” tag for that disinformation…

  19. 4

    Re: “Although these [abandoned provisional] applications are all secret, the USPTO does have the power to conduct a study on the files to begin to help us understand their value. ”
    ? How could they do so anyway, since “value” depends on UMCs, marketing, licensing, and infringement evaluations, not just prior art?

  20. 3

    The nearly 80% abandonment rate of provisional applications by micro inventors corresponds to the experiences with individual inventors of the only patent attorney I know who had many such clients. [Some large firms will not even represent individual inventors any more.] Presumably many such inventors decided after one year that there was not enough licensing interest in their idea to justify a regular application, or found prior art?
    Note that publishing provisional applications that were not priority-claimed in a regular application would create a large body of additional prior art that could preclude patenting by some later independent inventors who were actually attempting to bring the invention to the benefit of the public.

  21. 2

    In general though, I have never seen any grant rate calculation take these abandonment numbers into account.

    Nor should it.

    C’mon man — you teach patent law, here’s a great chance for you to provide a lesson why.

  22. 1

    Would publishing provisional applications deter filing them in the first place and, in the end, hurt innovation?

    If your proposed system with implemented (where provisional applications are published after 5 years), it would be wise to include an optional and nominal fee that the applicant could pay to avoid such a publication.

    1. 1.1

      was implemented*

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