What we have learned about provisional patent apps since the introduction of AIA

Provisional applications for patents serve to lock in a filing date and obligate the filer to file a regular patent application within a year. There are two distinct benefits, though neither of them add to current patent value.  The first is cosmetic, perhaps, though it may serve important notice to competitors” provisional filers can label their product “Patent Pending.”

The second, however, directly affects valuation: The filing of a provisional application grants the filer up to 12 months additional time on the patent, as the provisional filing date is used as the date filed, but the non-provisional filing (the patent application) determines the start date for purposes of patent expiration. Valuators who use the patent expiration date as the useful life need to take into account whether or not a client first filed a provisional application and the exact dates of both filings.

Learning from what has happened since enactment of the America Invents Act (AIA), Jim Singer, writing in IP Spotlight, has issued some cautionary guidelines regarding provisional patent applications, stressing they can offer a false sense of security for applicants who do not create a proper filing.

In years past, a research paper and brochure might suffice for a provisional patent application. Not so anymore. Today, a provisional patent application must fully describe and enable the invention. In university and research settings, inventors are used to filing a research proposal as a provisional application. In effect, the research paper will describe what the inventors plan to do and how they plan to do it, “but it often fails to describe the actual invention.” As such, it becomes little more than competitive intelligence.

Singer cites Novozymes A/s v. DuPont Nutrition Biosciences  APS, where the Federal Circuit invalidated a patent because its application (including the corresponding provisional patent application) “failed to show that the applicants actually understood the invention at the time of filing.”

The provisional patent application should specifically describe what the inventors believe will result from the research, what practical applications may result, adding where possible potential alternative results.

The law does not require claims in the provisional patent application. However, the law does require that the anything claimed in the formal application be disclosed in the provisional. “If the claims include new matter, the claims will not get the benefit of the provisional application’s filing date.” Singer suggests applicants prepare some claims before filing the provisional application, even if they don’t appear in a traditional claims format.

Inventors should review the provisional application on a regular basis — such as monthly or quarterly — not wait the full year. The one-year grace period in the law applies to disclosures by the inventor, only, so others may be finding prior art.

Finally, inventors who have partially developed an invention should consider filing a provisional patent application early, then, as developments occur over the succeeding 12 months, consider filing additional provisional applications “to fix filing dates for new subject matter as it is invented.”