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Getting Two Years out of a Provisional Filing


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Provisional patent applications serve as a place-holder for patent rights. They are never examined and do not directly advance an invention to a patent grant. However, they preserve a "priority date" or proof that the invention was conceived and (at least constructively) reduced to practice as of the date the provisional patent application was filed.

When to File a Provisional? If your company is committed to commercializing the invention and the technology is ready, filing a provisional patent application is an unnecessary expense. You effectively are delaying the potential grant of your patent application because the provisional patent application is never examined. It is far better to file a non-provisional patent application and get the application in the queue for examination and eventual issuance. However, there are a few instances when the provisional application might make sense….and it generally always comes down to money:

  1. Researchers: You are a research university/institution looking for a licensee to pick up the non-provisional patent application expenses. Filing a provisional preserves rights to the invention.
  2. Startups: You are a startup with limited capital and need a year to raise funds.
  3. Improvements: The technology is "enabled" but substantial new embodiments and improvements are expected within the next year. Additionally, there may be a host of related technologies that can be "grouped" into a single provisional application and later split off into one or more non-provisional applications.

Getting Even More out of a Provisional. What if 12 months isn't enough? The United States Patent & Trademark Office (USPTO) has extended its Missing Parts Pilot Program to run through December 31, 2013 (see Federal Register Volume 78, Issue 7 (January 10, 2013)). Under this program, when the one year provisional deadline comes up, you file the application as a non-provisional but do not pay the search fee, the examination fee, any excess claim fees, and the late surcharge fee. Instead of 60 days, you'll have 12 months to pay the late fees. Properly done this gives you two important options:

  1. Proceed with Non-Provisional: You pay the missing fees and the non-provisional gets placed into the examination queue as if the fees were timely paid. In other words, this procedure does not delay patent examination.
  2. Defensive Publication: You don't pay the fees and the filing will be published six months late and serve as a defensive publication.

Cost Savings: For a small entity as of January 28, 2013, the government fee savings amount to $630. Legal fees depend on the law firm but know that you'll need at least one claim and drawing to satisfy the program's requirement. If you do salvage the non-provisional filing you can add claims prior to examination provided no matter is claim that is not supported by the application's specification.

Conclusion: Although this procedure may be rarely used, it is a nice option to have when the circumstances warrant and this is certainly the best possible route to achieve an inexpensive defensive publication for your technology.

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