A provisional patent application (PPA) is similar to a non-provisional patent application (NPA) in content but, unlike the NPA, may have informal drawings and may or may not have claims. The PPA is often the applicant’s first and best evidence of a reduction of the invention to practice. As such, it is not intended to be an instrument for examination but rather an instrument for reference. It has several useful properties, three of which are: (a) if prepared adequately, it provides an invention date; (b) numerous provisional applications may be filed, after the first filing, that contain the subject matter of the first and subsequent filings without invoking the new continuation limits of November 1, 2007; and (c) its claims are optional and not examined, i.e., the PPA is outside the November 1, 2007 rules requiring an examination support document (ESD) for NPAs having more than five independent claims and more than 25 total claims.
For example, an inventor may describe a first embodiment sufficiently enough to support a first PPA or NPA. Four months later, the inventor may have a second embodiment which taken with the first embodiment supports a second PPA or a continuation-in-part (CIP) of the NPA. Four months later, the inventor may have a third embodiment which taken the first and second embodiments supports a third PPA or a second CIP of the NPA (technically a CIP of the first CIP). Filing PPAs alone, before the one-year anniversary of the first PPA, a first NPA could be filed claiming priority to all three PPAs (whether any PPA was expressly abandoned or not…see below). This first NPA would have both of its allotted continuations (without petition and showing) available to it under the rules of November 1, 2007. However, filing no PPAs, the second CIP would be the second of the two-continuation allotment.
In the above scenario of multiple PPAs, if the inventor was interested in foreign/PCT filing as well, then consideration should be given to expressly abandoning each PPA before filing the next one so as to keep flexibility in the Paris Convention one-year priority date. (The benefit of an expressly abandoned PPA may be claimed by an NPA having common subject matter filed within one year of the PPA filing date.)
After an invention is described in what may be termed a complete invention disclosure, the time taken to draft a non-provisional patent application, including review cycles, can be measured in weeks and in some cases months — where the courts find six months to not be unduly reasonable. With the passage by the U.S. House of Representative of HR 1908 (and with the Senate’s S.1145 in committee), the days of the U.S. being a first-to-invent, rather than first-to-file jurisdiction, may be coming to an end. If (or when) the U.S. becomes a first-to-file jurisdiction, then in fields having highly competitive research and development, the time from invention disclosure to having a patent application on file might be measured in hours rather than months and most will most certainly be measured in days. Here again, the provisional patent application can be filed based on an adequate invention disclosure (supportive of claims one would wish to make in the eventual NPA) with subsequent improvements included in subsequent PPA filings.
In addition, if (or when) the U.S. becomes a first-to-file jurisdiction, U.S. inventors may become more mindful of filing a PPA prior to making a public disclosure and thereby preserve international or “absolute” novelty in the invention. The PPA may serve as a priority document for foreign applications, and/or an international application under the Patent Cooperation Treaty (PCT), filed within one year of the first PPA for which priority is claims under the Paris Convention. With the fast approaching elimination of the international search fee reduction by the USPTO as international search authority (ISA) for applicants having a previously-filed U.S. non-provisional patent application (see the PCT fee-related post below), the incentive for the co-pending U.S. application is diminished. The (South) Korean Intellectual Property Office (KIPO) may be selected by the U.S. applicant to provide the PCT international search and charges less than $300. With that U.S. international search climbing to $1,800, one or more PPAs followed by a PCT application having the patent office of South Korea designated as the ISA may provide broad pending protection with minimal filing fees. The decision to enter the U.S. national stage from the PCT and/or with what claims, may then be influenced by the results returned by the KIPO search.
Domestically, whether the PPA is filed to establish an invention date or merely prudently reserve the NPA continuation allotment, patentability searches may be contemplated by the applicant and may be cost-effectively staged as the invention unfolds in additional embodiments and under additional PPAs. As such, should the NPA require more than five independent claims or more than 25 totals claims, the uncertainties of the thoroughness of the search may be greatly reduced when the ESD is submitted due to these staged searches during the PPA phase.
