• office locations
     
    Bluffton, SC map
    Bluffton, SC Office
    The Plaza at Belfair
    4 Clarks Summit Drive
    Suite 200 | Bluffton, SC 29910-4993
    843.815.2171  Main | 843.815.5991  Fax
     
    Charleston, SC map
    Charleston, SC Office
    100 Calhoun Street
    Suite 400 | Charleston, SC 29401
    843.723.7831  Main | 843.722.3227  Fax
     
    Charlotte, NC map
    Charlotte, NC Office
    Bank of America Plaza
    101 South Tryon Street
    Suite 2610 | Charlotte, NC 28280
    704.347.1170  Main | 704.347.4467  Fax
     
    Columbia, SC map
    Columbia, SC Office
    1221 Main Street
    Suite 1800 | Columbia, SC 29201
    803.799.9800  Main | 803.753.3278  Fax
     
    Greenville, SC map
    Greenville, SC Office
    Poinsett Plaza
    104 South Main Street
    Suite 700 | Greenville, SC 29601
    864.271.4940  Main | 864.271.4015  Fax
     
    Hilton Head Is., SC map
    Hilton Head Island, SC Office
    Shelter Cove Executive Park
    23-B Shelter Cove Lane
    Suite 400 | Hilton Head Island, SC 29928
    843.785.2171  Main | 843.686.5991  Fax
     
    Myrtle Beach, SC map
    Myrtle Beach, SC Office
    Founders Centre
    2411 Oak Street
    Suite 206 | Myrtle Beach, SC 29577
    843.444.1107  Main | 843.444.4729  Fax
     
  • contact us
      No   Yes  
PROFESSIONALS OTHER CONTENT
     
Instagram

News Room

Print
Share

McNair Intellectual Property Alert: Provisional Patent Applications - The Right Way and the Wrong WayApril 28, 2016

Related Information

Professionals

Locations

In 1995, the United States Patent and Trademark Office first offered the provisional patent application. The goal was to provide patent pending status at lower costs and to assist with preserving foreign patent filing rights. A provisional patent application has a life of 12 months from its filing. This 12-month period cannot be extended so that an applicant must file a corresponding non-provisional patent application during the 12-month period in order to benefit from the earlier filing of the provisional application. Provisionals are strategically used for several reasons:

  • to obtain patent pending status and prevent a public disclosure, sale, or offer to sell that would bar the ability to obtain patent rights;
  • to provide a lower cost investigation period so that commercialization research can be performed to determine the subsequent investment into the invention's commercialization; or
  • other motivators such as an investor requesting that a patent applications be filed. When filed, the provisional patent application allowed for the designation "Patent Pending".

One important aspect of a provisional patent application is that it should include a sufficient technical description of the invention so that one reasonably skilled in the art could make or practice the invention after reading the provisional patent application, the § 112 requirement. However, the "sufficient technical description" requirement is frequently misunderstood.  Without this technical description, the provisional patent application has little to no value.  In fact, having an improperly prepared and filed provisional patent application can result in a false sense of security that patent rights are preserved, when in fact they are not.  As recently stated by the Federal Circuit, a provisional patent application must have the following to be of value to the subsequent non-provisional:

  • a technical description that contains a written description of the invention;
  • the manner and process of making and using it;
  • written in full, clear, concise, and exact terms to enable any person skilled in the art to make and use the invention; and
  • the best mode contemplated by the inventor or joint inventor of carrying out the invention. (35 U.S.C. § 112.) 

We have seen several online, self-help legal service providers offering provisional patent applications by advertising "low-cost" applications.  We have also seen short cuts being taken when provisional patent applications are drafted and filed in an effort to "save money".  Unfortunately, a number of these provisional patent applications are not legally sufficient. In a recent case, the court in Dynamic Drinkware v. National Graphics (Fed. Cir. 2015), held that nowhere did Dynamic demonstrate support in its provisional patent application for the claims of the subsequent patent that issued from a non-provisional, and therefore could not rely on the provisional application for the priority date.  In an earlier case, Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 2011 U.S. App. LEXIS 17826 (Fed. Cir. Aug. 26, 2011), the Federal Circuit stated that a provisional application's earlier filing date can be relied upon so long as that application contains an adequate written description (the § 112 requirement) so that one of ordinary skill in the art could practice the invention claimed in the non-provisional application.

While provisional patent applications have a reputation for being the "down and dirty" or "poor man's" application, unless drafted by an experienced patent practitioner who can include sufficient technical description of the invention to form support for the claims of the subsequent non-provisional patent applications, the provisional applications may be a waste of time and money, and can result in a loss of patent rights.