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Provisional Patent Basics

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Joanna Chen

on 20 March 2015

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Transcript of Provisional Patent Basics

Patent Requirements:
Novel & Non-Obvious
Novelty: Must be New
Applicant may only receive a patent for the implementation of an idea not previously known.
35 U.S.C. § 102

Non-Obviousness: Minor alterations to existing technologies do not constitute an invention
No patent will issue if the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. 35 USC § 103

The following presentation is provided for informational purposes only and should not be construed as legal advice.

Always consult attorneys for advice pertaining to your specific business and intellectual property needs.

All images and references to trademarked, copyrighted, and/or patented material in this presentation are for informational and educational purposes only.

Provisional Patent Basics

- unify U.S. patent laws with those of other countries
- streamline patent office procedures
- stimulate innovation and entrepreneurial investment

Substantive patent law changes effective March 16, 2013

What is a Patent?
An exclusive
property right
granted by the U.S. Government to:

Exclude others
from making, using, offering for sale, or selling the patented invention…

Within the United States;
Importing or exporting the invention;
for a limited time; and
in exchange for public disclosure of the invention.

Enforceable by injunction
35 U.S.Code § 271

The Value of Patents
In 2013:
Kodak’s portfolio of
digital photography- related patents sold for $525 million
Microsoft acquired
patents from AOL for more than $1 billion

Patent Valuation:
(1) determine the
of the underlying invention
whether the patent is well-constructed
(3) figure out how to
value from the patent (licensing, marketing, etc.)


Determining Inventorship:

“The threshold question in determining inventorship is who conceived the invention… reduction to practice, per se, is irrelevant” Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)

Patent Eligibility

Joint Inventors:

“[f]or persons to be joint inventors under Section 116 there must be some element of joint behavior, such as collaboration or working under common direction.” Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d. 911, 916 (Fed. Cir. 1992)

Presented by:
-First-to-Invent System will become First-Inventor-to-File

-New 35 U.S.C. §102(a)-(d) substantially changes basis for novelty

-Broadens prior art to also include experimental uses and oral presentations

-Exempts disclosures under common ownership

America Invents Act -
Additional Changes

Supplemental Examination

Micro Entity Filing fees

Prioritized Examination

Inter-Partes Re-Examination

Provisional Patents

“Short Form Preliminary Patent Filings”

35 U.S.C. § 112(b)
Harmonize U.S. and International law and simplify patent process

Created during 1995 GATT Uruguay Round Agreements.

1.7 million provisional applications filed since 1995.

Establishes one-year grace period & priority date. Application for non-provisional must be filed with USPTO within that year.

Satisfies priority date and statutory bar requirements like a utility patent.

Not examined.

Remains confidential unless referred to in later non-provisional application.
America Invents Act:
Major Changes
Why PatentFiler? Cost.
Total cost of $495 at PatentFiler ($595 for Large Entities)
Includes USPTO fees
Optional additional services include attorney consultations ($250)

Avoid new fees associated with paper filing [AIA § 10(b)]
Those who choose not to file electronically now must pay the “Luddite Penalty”
$400 (or $200 for small entities)

Expensive “interference proceedings” eliminated under AIA
File with PatentFiler.com and the race to establish priority is won!

Why PatentFiler? Updates.

Receive Regular Electronic Updates regarding:

Development of your invention
Prototyping inventions to help establish breadth and use in obtaining market feedback and/or financial backing
Use professional patent searches to determine feasibility of your invention such as patentability and possible infringement risks
Raising capital to further develop your invention
A patent attorney can help with development and additional patent filings
Licensing and developing your invention for profit
Use of non-disclosure agreements
Next steps required to protect your invention
Reminder about time needed by professionals to prepare your non-provisional patent application and drawings
Importance of your patent application’s drawings & figures
Do you also need other intellectual property like a trademark? Domain name? Copyrights? – Other intellectual property may be useful in licensing your invention

Why PatentFiler?
Electronic Filing Management.

Keep track of patent filings at PatentFiler

Log in and track each of your inventions and upcoming deadlines

America Invents Act
Provisional Patents

Utility Patents -
Provisional v. Non-Provisional

Typically at least one drawing
No Claims, IDS, Oaths, or Declarations required
Low Cost… absolute lowest cost option
Claims, Oaths, Declarations
Higher Cost
Long examination process
Provisional Patents -
Cover Page & Drawings

“as necessary to understand”

Cover Page

Provisional Patents -
Detailed Description

A later-filed non-provisional application claiming the benefit of the provisional application must include:

Although a claim is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later filed non-provisional application in order to benefit from the provisional application filing date.

Provisional 35 USC §112 Compliance

You MUST file a US patent application within one year from your first offer for sale or public use of the invention or you are barred from getting a valid patent
Provisional Patents -
Pre-Filing Offer for Sale or Public Use

Timeline: The benefits of the provisional application cannot be claimed if the one-year deadline for filing a non-provisional application has expired. Provisional applications are not examined on their merits. Provisional applications cannot claim the benefit of a previously-filed application, foreign or domestic. Many provisional applications can be filed, not just one.
Provisional as a Priority Filing:
Unique Considerations

Provisional Patents Filed by Fiscal Year
Why Use a Provisional Patent?

Win the race to the patent office

Fast moving technology

Test-marketing potential

Cheapest means of securing global patent priority

Effectively extends patent term by one year

Not subject to information disclosure statement requirements

Automatically defers replies to official office actions on the merits

Allows for the filing of multiple provisional applications and for consolidating them into a single domestic non-provisional or PCT application (rolling provisionals)

Provides for submission of additional inventor names by petition, if omission occurred without deceptive intent (deletions are also possible by petition)

Permits intentional abandonment of provisional application leaving no rights outstanding

Streamlined filing (claims not required)

Few formalities (cover sheet) enables immediate commercial promotion of the invention with greater security against having the invention stolen

Preserves application in confidence without publication in accordance with 35 U.S.C. 122(b)

Permits applicant to obtain USPTO certified copies (could be very important in joint R&D or collaboration situations)

Will only support priority for a later filed utility patent if it is “enabling”

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
35 USC §112, 1st Para
At least one claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention. 35 USC §112, 2nd paragraph.
New Railhead Mfg. LLC v. Vermeer Mfg. Co. et al., 298 F.3d 1290; 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002)

Patent invalidated because provisional application lacked adequate written description

Federal Circuit Court of Appeals requires strict compliance with 35 USC § 112

*Note: Filing a provisional patent application as opposed to a non-provisional patent application may have some downsides:

No formal examination and no patent issuance -> a provisional is a placeholder for 12 months

If you have the materials and finances for a non-provisional patent application fully-prepared (also meaning that your idea is fully developed), the extra step of a provisional application may represent an unnecessary delay and extra cost
Tips for Provisional
Patent Filers

Why PatentFiler? Speed.

File a provisional at PatentFiler and quickly gain:

a priority date and,
“patent pending” status

Contrasts with cumbersome paper filing through USPTO

First-to-file transition accentuates the importance for an expedient means of filing


One year passes quickly
Provisional may trigger foreign filing deadlines
Doesn’t toll the statutory bar deadlines unless a utility application is timely filed
Best practice is to commence work on a utility application soon after filing the provisional application
More disclosure is better than less
The closer your provisional looks to a utility application, the better off you will be
The invention disclosed in the provisional can be marked as "Patent Pending“

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