Provisional Patent Applications
Presentation To: Mass Software Council Business Practices & Legal Issues Series By Gib Hennessey Fish & Richardson P.C.
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What’s Up With Provisionals?
Begun in 1995 As-is format
Slap a Cover Sheet on anything Name an inventor $80 ship to Washington
No patent claims No Inventors’ Oath
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How It Works
Just a place holder No examination by the Patent Office Lapses after a year So, why do it? If you subsequently file a nonprovisional app
within a year and mention the provisional You may be accorded the filing date of the provisional
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That’s it!
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The Catch
Provisional’s disclosure has to meet exactly the same disclosure standards as a fullfledged utility application
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Advantages of Provisionals
Lower Costs
Lower filing fee $80/160 vs. $370/750+ Lower attorneys fees
Shifts Patent Term one year out Delays Examination Beats a bar against foreign filing Enables “Patent Pending” labeling Proves date of invention
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Disadvantages of Provisionals
Delayed examination and issuance Higher total cost since app has to be redone lulls many into thinking they have protected IP High risk of Inadequate Disclosure Accelerated Foreign Filing Early Publication of the Application
18 months from earliest priority Without a claim, who knows? Change problematic for priority and validity
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Inventorship
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Where Did Provisionals Come From?
December 1994 URGATT – TRIPS
20
year term
Level playing field for term Cheap entry into the patent system Was supposed to go with first to file
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Stupid Provisional Tricks
The Transformer: Convert utility into a provisional within a year, and refile another utility immediately
Advantage – examination may be underway Term starts with second case Ideal if you have additional disclosure and were going to file a CIP anyway
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More Stupid Provisional Tricks
Shock and Awe: File long series of provisionals, each immediately abandoned
Advantage - choice of which to use for priority claim Good for early stage projects developing over time
The Disposal variant:
File on everything once a month
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Bottom Line
Great tool for dealing with foreign filing bar Great for drug companies Great for cheap IP window dressing Otherwise, not recommended
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