20 April 2015

What’s ‘Provisional’ About Provisional Applications?

HourglassLast week I wrote about one of the benefits of filing a provisional patent application – the ability, in most cases, to mark corresponding products or services as ‘patent pending’ or equivalent.  I have been thinking, however, that there is a bit more to be said about provisional applications.

Provisional applications are, in my experience, not very well understood among the general community.  For example, there remains a pervasive belief that a provisional application is something that can be prepared and filed quickly, casually and cheaply, and that this will provide all the protection needed for the first 12 months.  This may once have been true, in a somewhat limited sense, but it is certainly not the case in Australia any more.  It has, in any event, never been true for applicants who wish to pursue patent rights in foreign jurisdictions based on an initial provisional filing in Australia.

In fact, it is generally best to treat provisional filing with the same gravity as any other patent application process.  What, then, is the benefit of provisional applications?  And should you be filing them?

Provisional Applications – The Exception, Not the Rule!

It is worth bearing in mind that most countries do not provide for provisional applications.  Many of those that do – including Australia, New Zealand and India – inherited their provisional application systems from the UK which, prior to ‘Europeanisation’ of its patent laws in 1977, had long allowed applicants to make provisional filings up to one year prior to filing a ‘full’ application.  (The UK has, in fact, retained a form of de facto provisional application system by allowing applicants to file ‘incomplete’ applications, providing a 12 month period within which all of the missing elements must be filed.)

One notable exception to this ‘inheritance’ pattern is the United States, which introduced provisional applications to its own patent system in 1995.  I shall discuss why it did so a little later, in connection with one of the major benefits of provisional filings.

An applicant who is not resident in a country that permits provisional applications may still be able to take advantage of the benefits of provisional filing, by applying initially in one of the countries that does provide for provisional filings.  Beware, however, that some national laws require a resident’s initial application to be filed locally, unless special dispensation (usually known as a ‘foreign filing licence’) is granted.

For European residents, for example, filing a US provisional application, rather than a European patent application, in the first instance is generally permissible, and may be an attractive option.

What is a ‘Provisional’ Application?

The Macquarie Dictionary defines provisional as an adjective meaning ‘serving for the time being only; existing until permanently replaced; temporary; conditional; tentative’.  A provisional patent application is all of these things, in the sense that it exists for only 12 months.  If it is not replaced within this period by a ‘complete’ (i.e. regular, or nonprovisional) application claiming the benefit of the provisional filing date, then it has no ongoing effect.  Indeed, in many respects it is as if a lapsed provisional application never existed at all.

Colloquially, however, the word ‘provisional’ also carries connotations of being ‘incomplete’, or subject to update, extension, or having the possibility of being changed at some later date.  It is dangerous to believe that provisional patent applications are ‘provisional’ in this sense of the word.  While it is true that an applicant has the opportunity to revise or update the content of a subsequent patent application following the filing of a provisional application, it is very important to understand the legal consequences of doing so.

In the worst case scenario, revisions in subsequent applications can result in loss of the benefit of the earlier provisional filing date.  This could be disastrous if there has been a public disclosure of the invention – either by the applicant themselves or, coincidentally, by some other party – during the period between filing the provisional application, and filing further national and/or international applications claiming the benefit of the provisional filing.

Provisional applications do not have all of the formal requirements of complete applications.  For example, a provisional application need not include an abstract, formal line drawings, minimum text size, page margins, and other formatting requirements.  More significantly, a provisional application need not include any claims defining the scope of the invention – although, for reasons I will outline further, omitting claims (or at least equivalent statements defining the desired scope of ultimate patent rights) is a dangerous cost-cutting strategy.

The Requirement for ‘Support’ in Provisional Applications

Provisional applications are not reviewed by a patent examiner at any stage during their 12-month pendency.  In other words, nobody in the patent office will look at the documents filed, and tell the applicant if they are in any way deficient.  The onus is entirely on the applicant to ensure that their provisional application is ‘fit for purpose’.

However, if the provisional application is going to be used to provide a priority date for further applications in one or more countries, it will need to provide full support, under all of the relevant national laws, for the invention that is ultimately claimed.

Taking into account the varying requirements of different national laws, if the provisional application is going to stand up as the basis for priority around the world, it will need to include a complete disclosure of the invention which is adequate to enable a skilled person in the relevant technical field to put it into operation.  It will also need to disclose the best method known to the applicant, at the time of filing the provisional application, for putting the invention into effect.  It will need to include all drawings necessary (however roughly-drafted) for understanding and/or implementing the described invention.  And it will need to include statements – preferably in the exact terms ultimately employed in patent claims – setting out the scope of patent protection desired, and ideally also covering a number of ‘fall back’ positions, in case prior art emerges during examination that prevents a broader scope from being obtained.  There are some jurisdictions, including Europe and China, that are extremely fussy about this last point!

If a provisional application does not adequately support all of the claims made in a subsequent application, anywhere in the world, then only those claims with sufficient support in the provisional application will be entitled to the benefit of its filing date.  All other claims will have a priority date corresponding to the filing date of the later application.  Any publications or disclosures occurring between the provisional filing date and the subsequent complete filing date will be prior art to these claims.

Ensuring the Value of Provisional Applications

A wise applicant does not skimp on a provisional application, even though this may mean that preparing the application to fully support all of the possible future national or international patent applications is likely to be just as time consuming and as costly as preparing a complete application.  Indeed, in this respect there is nothing ‘provisional’ about provisional applications!

I always advise clients that provisional applications should be prepared to the same standards as any other patent application, including a reasonably comprehensive claim set.  Anything else is, frankly, false economy, and may create an unjustified sense of security.  I generally conclude that prospective applicants who are unwilling to heed this advice are not serious about pursuing patent rights in the longer term, and/or have not fully worked through a cost/benefit analysis for obtaining patents in their business.

Provisional Applications – A ‘21st Year’ of Patent Protection

The biggest advantage of provisional applications, in my view, is that they are the one-year gift that just keeps on giving!  While filing a provisional application in the first instance may not result in any significant reduction in up-front costs (if done properly), it is one way of establishing a toe-hold in the patent system that is in no way inferior to any other form of initial filing.  Just like any other application, a provisional application can be used as the basis for a priority claim in almost any national or international application filed within the subsequent 12 months.  It is therefore an effective mechanism to delay further costs of filing and examination of applications by up to a year.

However, it is at the other end of the patent term that a provisional application can potentially add the greatest value.

One of the major reasons the US introduced provisional applications about 20 years ago was because they realised that foreign applicants were going to obtain an advantage in their patent terms that might not be available to local (i.e. US) applicants. 

As a result of new treaty obligations, the US was moving to a patent term running (nominally) 20 years from the US filing date, instead of 17 years from the date of grant.  This meant that a foreign applicant who had filed initially in their home country (e.g. Australia), and then filed a US (or international) application, 12 months later, claiming priority under the Paris Convention from that first application, would effectively obtain one year of ‘additional’ patent term at the end of the US patent’s life, compared to a local applicant who had filed their initial application in the US.

Not wishing to see its own citizens disadvantaged in this way, the US introduced provisional applications as a national mechanism to acquire that same initial priority date, along with the ‘21st year’ of patent protection.

While some inventions might deliver most of their commercial value well within the 20 year maximum patent term, there are others – perhaps most notably pharmaceutical and other medical inventions – that will deliver the majority of value during the later years of patent protection.  In such cases, it is a virtual no-brainer to start the patenting process with a provisional application.  In the case of a blockbuster drug, for example, that final additional year of protection could literally be worth billions of dollars, and be key to justifying the huge expense and risk of investing in new drug discovery and development.

Conclusion – The Valuable Role of Provisional Applications

While provisional applications have traditionally been regarded as a cheap entry point to the patent system, if a provisional filing is to be of any real value this is simply not true.  There are no shortcuts – every applicant has a responsibility is to sufficiently describe and define their invention from the outset.  The ‘quick and dirty’ provisional – assuming it ever had any value – is certainly now a thing of the past.

However, if there is no great urgency to obtain a granted patent, it is definitely worthwhile to take advantage of a provisional application system, where available.  Whether or not the additional year to prepare and file complete national and/or international applications provides any benefits or cost savings, filing a provisional application effectively ‘delays’ the commencement of the 20-year patent term throughout the world.

Given the choice, most patent owners would no doubt agree that a longer term of protection is better than a shorter term.  Commencing the patenting process with a provisional application puts the clock on-hold for up to a year, preserving the patent term for when it is really needed – after the product has been developed and launched to the market.

In short, while provisional applications may not be as ‘provisional’ as the name implies, they definitely remain an important part of the patent system in those countries in which they are available, and can play a significant role in a commercially-focussed patent strategy.


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