Provisional Patent Application Guidelines with Jason Webb

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Alright. I'm Jason Webb, I'm an intellectual property attorney at Pearson Butler. My practice is all over the country. I have clients all over the place. It's federal practice, so I'm not limited just to my. And I also have a lot of international clients. Today we're going to talk about provisional patent applications with the United States Patent Office. So provisional patent applications are a relatively new type of application. I think they're around 20 years old or so. It wasn't always possible to do a provisional patent application, but what happened was people were lobbying Congress saying, hey, it takes a long time for attorneys to be able to properly prepare paranon provisional application or a standard utility patent application is what it was called back then, just a utility patent. And because it takes a long time or because there's so many requirements and so many formality requirements and so many things that you just can't change once it's filed, then you know, it's taking months for us to get these filings in and we need them filed quickly because the priority date's really important anyway. So they were saying this is hard and this is a problem and this is making it difficult to do business, so what can we do? So what they decided to do was to allow sort of a temporary application with fewer requirements, fewer standards. It wouldn't be examined. And since it wouldn't be examined, then all the examination requirements that you would have to have just don't have to be there. So it can be a lot less formal. They decided to call it a provisional patent application. However, the standard utility patent application didn't have a name, it was just the patent application. And so since they called it the provisional application, the standard application then became called the non provisional patent application to distinguish it from the provisional patent application. And that has caused a lot of confusion with people because who calls the normal thing with a word starting with the word non, right? You just don't do that, but we do that. So the standard utility patent application that you need to file to get a patent registration in the end is the non provisional patent application, the provisional application. Provisional means temporary or just for now patch sort of a thing. And it's a great way to get Your foot in the door in the patent office, quickly, easy, less expensive. That said, provisional patent application will not register. You have to follow it with a non provisional patent application that quote claims priority to the provisional application. And basically what that means is that the non provisional application in the filing documents will mention the provisional by its number and by its filing date and by the inventor. And that ties the two together. And that says this non provisional is based on provisional. And for everything that's described in the non provisional that's also described in the provisional, we want the priority date, the filing date of the provisional. And then everything that's new in the non provisional gets the filing date of the non provisional. And that's great. Now it also adds an extra step, an optional step, but it adds an extra step in the process and adds some extra expenses, some government fees. It also delays when your application gets assigned to an art unit and therefore assigned to an examiner. So if you go the route of a provisional patent application, first know that in the long run, your total expenses and therefore your total return on investment will be different. Your expenses will be higher and your return will be lower. Also, it'll take you longer to get to the registration because a provisional lasts for about a year. And as long as you file the non provisional before that year is up, then you can claim priority. But they don't assign an art unit to your application and therefore can't assign an examiner and therefore can't put it in the pile of things for that examiner to work on until you file the non provisional. And so it will delay how long it takes to get the patent in the end. So if those are things that would be a problem for you, then maybe not going the provisional route is the best option. I found that there are about four situations where a provisional application is attractive and valuable to an applicant. One of them is if you're short on time. If you have a big show that you're going to, and you're going to that show in less than a month, there's not really time to file a standard patent application then going to the show. And for business reasons, it's super important that you show off your invention at the show, at the trade show or whatever. So if you're running up against a deadline that's really short, a provisional application can get your protection in place and still allow you to go out and tell the world about your invention. So if you're short on time, that's helpful. If you're short on money, and remember, in the long run, it'll cost more to do a provisional. But if you're short on money today and won't be short on money later, then filing a provisional now can get you protection that you might not be able to afford right now. So that can be really helpful. Another one is if you're short on commitment to the project. So, for example, if you want to do some market testing or you want to do something before you really commit to to launching this product or this service, then filing a provisional allows you to, for less expense, get protection and be free to go out and do your testing or launch the product or do a soft launch or a limited launch without giving up your rights to protect the invention. And then if that turns out well, you can then go forward with a non provisional with more confidence that yes, this is what I want to do, I want protection in this area. If it turns out that it doesn't go well and you're going to just bag it, then your sunk cost, your investment that you already put into it is less. And so that can be useful. It's especially useful if you're a really prolific inventor, you've done a lot of things and you have some process for filtering which ones you're really going to go forward with, then you can file quick, cheap provisional applications. A lot of universities do this with their tech transfer office. They have lots of professors inventing lots of things and they're not quite sure which ones they really want to go forward with. So let's file provisional applications on everything. That gives us a year to sort out which ones we really care about. So that's another one and then a fourth one. And this is especially true in the software space. There are some times where you've invented something, but there's still a lot of engineering to do. And creative people are going to be involved in the engineering. You know, maybe the inventor is going to be there and you think that maybe there's more ideas that haven't come out that are related to what you feel is new and unique and special about the invention, and that those are probably going to come out during that development. So what you might do is you might file a provisional application now, work on that, and then file the non provisional application before the year is up. But everything that you've worked on and developed and solidified and clarified in your head will all that learning, all that knowledge, all the extra pieces that now exist, that didn't exist when we filed the provisional, those are things we can include in the non provisional. And so sort of, in summary, A provisional can be really useful if you're short on money, if you're short on time, if you're short on commitment to the project, or if there's a lot of development yet to be done on it. You need the protection now in order to really go forward with the development law. That can be really helpful because not everyone is willing to sign a confidentiality agreement or a non compete agreement. And until you file a patent application, you have no protection. And without those kinds of agreements, and even then those agreements, sometimes they non compete, there's ways to get around them, confidentiality agreements, people can sneak information out and if you can't ever prove that they disclosed it, then how do you do that? So having a patent application filed protects you against everyone without any of them having to sign any agreements at all. And so that's extremely helpful in moving things forward with your business. So provisional patent applications are great in those situations. If you're not in one of those situations, then maybe you would be better off going straight to a standard non provisional patent application. So as far as what's the difference between provisional application and the non provisional application? Examples would be the drawing requirements for a provisional patent application. I could sketch something on a napkin, take a photograph of it with my phone, or scan it into a computer and I could file that. And it would look messy and it would be really informal and it wouldn't really comply with the drawing requirements that we have for patents, but it would be okay. Now obviously you want it to be clear enough that it makes sense and that you can tell what the things are, but as far as line width and margins and thicknesses and how big the letters are, you're not gonna have to worry about that. So that's one of the differences. Another huge difference is that you're not required to have claims in your provisional patent application. Now, for foreign applications, sometimes it's important to have at least one claim your provisional, especially if you're planning on filing in Europe. In Europe, your claims can never be broader than your broadest claim in the priority document. And so if you do one really broad claim, then at least you sort of set this boundary that's very far away and gives you more space in your claim. What you can do with the claims in Europe, you're not planning on filing foreign applications, then there's no need for a claim in your provisional application. Sometimes what we'll do in claims and provisional applications is sort of do some skeleton claims that give us sort of a reminder of what we were thinking. We wanted to claim, or at least the directions we were wanting to go at the time that we filed it. Now, we may change our minds later, but at least that's a recordation of this is sort of what we were thinking about when we filed the application. And that way we get, you know, a year later, we get to get started where we left off instead of having to create that in our minds. So no claims. That's another big change.

One of the places where people sometimes get stuck with provisional applications is there is still a technical review, like a clerical review, to make sure that what you filed is what you said you filed. And so where people can get problems is if they have a list of drawings, say, you know, we have Figures 1 through 10 in this application, and then they change their minds and take out some figures, or they add some figures, so then the list of figures doesn't match the actual figures, then they can kick it back and you can lose your priority data if you don't respond in time and respond properly. So that's something you want to be careful with. Now, that can be really helpful because what if you forgot to include a figure that you did want to include? So that's why you still want to have your list of figures, so that if they do catch that, then at least you catch that problem as quickly as you can. But when you're filing the application, you want to be careful that you are filing everything that you plan to file and not leaving anything out, not making mistakes with that. It's another difference with the provisional applications, let's focus on what needs to be done. So in the provisional patent application, you still need to meet the written description requirement, which means that you're describing it well enough that someone of ordinary skill in the art could recognize that, yes, you've invented something. This isn't just science fiction. This is real. You have a real conception of what this invention is, the enablement requirement, which means that one of ordinary skill in the art could take it and go produce it. An example I give a lot of times to people is I say, imagine that what we filed with the government, that then gets sent to your programmers or your engineers or your chemists or whoever is going to produce the invention. You go into a coma, you're gone for six months, or you're gone for a year. They can't ask you questions, you can't comment, you can't critique, you can't review. You wake up in six months. They have to have produced, based on what you wrote, a functioning invention. It doesn't have to function all the time. It doesn't have to be aesthetically the way that you want it to be. Right. But it has to be functioning. And so if you can't describe it well enough that they can do that, now, if they're engineers, they're going to pick the screws, they may pick the materials. If the materials are just optimization, right? You don't have to include every little part and piece, so you don't have to give them every little detail, but you have to give them enough detail so that they can know where to go, what direction to go, what parts are there, how do they connect to each other, how do they work together, what's the final functioning version like? You need to include enough description there. Now, another piece that you need to make sure is in the provisional is enough variations and enough description of different ways to do your invention that the doctrine of equivalence can be used if needed. And this is one of the ways that you prevent someone from just changing one little thing to get around your patent. I'm sure a lot of you have heard about that, or people complain about patents and say, well, you just have to change one little thing and get around the patent. Well, there's a whole doctrine called the doctrine of equivalence that fights against that, that if they just change one little thing, but they're essentially still doing the same thing, just not exactly what you said, they can still be infringing under the doctrine of equivalence, but it's really hard for that to apply. If you describe one and only one version of your invention, you don't talk about, well, this part could be like this or it could be like that, or it can be connected in this way. Right. And that's why you see a lot of language in patent applications like, you know, it could be coupled there, too, with a coupling device, including, but not limited to snaps and buckles and clips and pins and rivets. And. Right, you see this big, long list. It's one of the reasons why patent applications and registrations are really boring to read, is because we're trying to describe lots of different ways to do it. So you want to be specific enough that someone could make it and build it and use it, but you also want to be broad enough and varied enough that someone can't just change one little thing and get around the patent. Also, be really careful about sometimes inventors want to hold back secrets. They want to hold back the secret sauce that really makes it work. If you describe your invention well enough that they can build it and they can build the best version of it, right? That's really the standard you're looking for if you're holding back a secret sauce to that invention that could be used against you later on. One, it could be used against you later on under best mode requirements. But, but worst would be if without the secret sauce, it doesn't even work at all. And I've had people tell me I want to get a patent on my chemical composition, right? But then they don't want to give me the recipe because they want to keep that secret. We can't get a patent on something, a chemical composition when you keep the recipe secret. It's a requirement that we be able to explain to the government how you make and use this. So think carefully about if you're wanting to keep something back from the government that could really cause huge damn problems to your patent application, even in the provisional states anyway. So I think that's a good overview of provisional patent applications. What they're good for, what they're like, some of the history of it. I found them to be very useful, to be very helpful. So I definitely do recommend that people use them when it's appropriate for the circumstances of the business. It's not right for everyone and there's definitely ways to do it wrong, but where done right and done in the right situation, they can be extremely helpful.

Hey, Jason, this is Tom. Thanks so much for giving that overview. Actually, I really liked that. I thought that was very helpful. I don't know that our members, unless they're already familiar with patents, have ever heard anything about the doctrine of equivalence before. So I thought that was a great thing to share. And I've done a lot of provisional patents myself and I do see the value in them as well. But I didn't know that about European applications and including one broad claim. So I thought that was also really useful and I'll definitely remember that for myself in the future. And that makes a lot of sense to me because obviously you want to include everything because if you don't disclose something, you can't claim it later. But I've had it happen where I think it was maybe one of my patents where I included several different ways to accomplish something, kind of like you were talking about, to give yourself some room in the context of the doctrine of equivalence. And the patent examiner at one point said, hey, you need to choose which road you're going to go down for this. It's almost like there's two different species of this invention and which one is the one. So There must be a judgment call or a fine line between including variations and really having two inventions in one application.

Yeah. And some of it is also how much work the examiner is willing to do. I've had situations where the examiner came back and said, this is two inventions. And either me or my client was like, no, no, it's not. We really want to keep this all together. And the research that I've done in order to combat that. Right. It kind of comes out that the examiner is the one who gets to decide that. And there are ways to fight it, but the examiner, of course, you're arguing back to the same examiner. And if the examiner is feeling they don't want to do that much work. Right. They don't want to do much of that. Seven, searching or sometimes, I think examiners sometimes will game the system in order to get easy. If I can split the same application into two pieces, and it's essentially the same work I get to do twice, I get credit for having done work for two applications, but I only had to do one application worth of work. Right. So sometimes I think they're legitimately saying, yes, this is two. Sometimes they think they're just gaming the system. But that said, when they issue those restriction elections is what they're called restriction requirements. Right. And so make a restriction election, they have to say that they believe that they are patentably distinct variations. And that's a great thing for you because that means that if they can reject one of them, then they can't necessarily reject the other one. And so it sometimes makes a distinction, sometimes where there isn't really one, but it puts on the record, hey, this is patentably distinct from that. So just because this one gets rejected doesn't mean this one's automatically rejected too. So that can go to your advantage as well sometimes. So my practice on that is if an examiner does that, then, hey, you know what? That puts one nice thing on the record. Let's not fight it. Let's go ahead and let it happen. And then the focus that we then do is say, all right, so these two things, or these four things or whatever, however it's been split up, which of these do we really care about getting the patent first on? Because whichever one we pick is going to go move forward with examination. We can file divisional applications for the others. But which one is commercially the most important that we get a patent on now? And that's the one that we pick.

That makes sense. That's very insightful. It really does become a negotiation with the examiner at Times, doesn't it?

It does, very much so.

And then the last thing I wanted to ask you, because I've experienced this to an extent, and I'm curious if you agree, is that provisional applications, because you want to make them very broad, you want to throw everything in there that you've thought of so that you don't miss anything you want to claim later you didn't disclose. I find that when I'm in a licensing situation or a potential asset acquisition situation, somebody maybe wants to buy the patent from me, that if I've left it in the provisional stage, if I do it in that first year before filing the full application. I think attorneys for who you're selling it to, their patent attorney tend to prefer that than if they're stuck with the language somebody else chose and filed a full application on that, they have a chance to sort of make their mark on it and try to be the hero for their client. I mean, have you experienced that?

So some of that will go on, especially for large companies who have established protocols for how they do claims, how they write their descriptions. A lot of times they'll prefer to be able to jump into that. I've also seen kind of some of the other way around where if you have a provisional, but you don't have a non provisional, then they will criticize the provisional as not having what they would want it to have in there. Right. Especially if, like you filed your own provisional and you didn't do it with normal standards. Right. Or it doesn't look nice. I've seen that happen. Another one I've seen is where they will, they'll negotiate with you, but they will intentionally draw the negotiations out because they think maybe he doesn't have enough money to file the full patent. And if I can get him to delay long enough and he doesn't meet his own deadline, then now he's told me everything. He can't get a patent on it and I can just walk off with it. So you want to be really careful about negotiating during that stage and making sure to have a really strong showing that we're going to meet this deadline whether you sign a deal with me or not. So don't come across as, hey, you're my one hope and I can't file a patent without your licensing, please. So, yes, be careful with that.

Yeah. That's unfortunate that some people would take advantage of you that way, but I think that that's the world we live in, unfortunately.

So. So, yeah.

Okay, well, wow. So insightful. Thank you so much. Jason, I really appreciate you being here today and I know our members do too, so thank you so much. We'll look forward to engaging with you on another related topic in the future.

That sounds great.

Okay, thank you.

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