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Deli Meats and the Provisional Patent Application

02 Mar 2021 by Ido Tuchman

Provisional patent applications are useful tools for protecting inventions in certain situations. However, like deli meats, provisional applications can cause more harm than good if used incorrectly.

The deli counter

One of my first jobs in New York City was at the A&P supermarket off Utopia Parkway in Queens. The deli department had one of those take-a-number systems. Inevitably there would be an unsuspecting shopper who would wait at the counter without a number while a group of shoppers grabbed tickets ahead of him.

Jimmy, the deli manager, was ruthless. “You didn’t know you needed a number? Too bad. Take a number.” “Your kids are hungry? Tough luck. Take a number.” “Grandma is waiting in the car? Ok, you can cut the line.” Jimmy had a soft spot for nannas.

Our first-to-file patent system is a lot like the deli’s take-a-number system. The first inventor to file a patent application gets patent rights to the invention regardless of the actual invention’s conception date. Unless you have a patent application filing date, someone else can jump ahead of you in line.

Take-a-date system

The U.S. Patent and Trademark Office offers several filing options to establish a filing date for utility patent applications. The simplest of these options is filing a provisional patent application (PPA).

Compared to other patent application filings, filing a PPA is a simple process. Besides a reduced filing fee, a PPA requires a written description of the invention and a cover sheet. Notably, a PPA filing does not require patent claims or an oath from the inventors. Once filed, “Patent Pending” can be printed on the invention and associated marketing materials. Furthermore, the 20-year patent term that normally starts when a patent application is filed does not begin when a PPA is filed.

Similar to aged cheddar, however, a PPA automatically expires 12 months after its filing date. This 12-month time period cannot be extended. PPAs are not examined and are never issued as enforceable patents. In fact, a PPA is merely a filing date placeholder for a later-filed non-provisional patent application (NPA) claiming benefit to the PPA’s filing date. The NPA benefitting from the PPA’s filing date must be filed before the PPA expires.

The trap

It’s important to know that the Patent Office does not hand out patents like deli samples. NPAs are examined for strict adherence to legal requirements prescribed by law. Among these requirements is the enablement requirement under 35 U.S.C. § 112(a).

The enablement requirement states that each patent claim must be supported by a written description that enables any person skilled in the art to make and use the claimed invention. When the written description fails to support a claim in a patent application, that claim cannot benefit from the application’s filing. Furthermore, a patent application cannot be amended to include new subject matter absent from the original patent application.

As mentioned above, a PPA is just a filing date placeholder for a later-filed NPA. In order to benefit from the PPA’s filing date, the claimed subject matter in the NPA must be sufficiently described in the PPA to enable anyone of ordinary skill in the art to make and use the claimed invention. A claim not sufficiently supported by a PPA cannot benefit from the PPA’s filing date.

Thus, a trap is set. Inexperienced patent professionals and unsuspecting inventors, seeing how easy it is to obtain a PPA filing date, may lower their guard when it comes to the PPA’s contents. While a PPA has relaxed rules for establishing a filing date, that filing date will not be recognized in the later-filed NPA unless the PPA’s contents adhere to the strict rules in the patent law.

For example, consider a company that develops and offers product X for sale on January 1, 2020. As the company receives customer feedback, it develops and sells improved product XY on July 1, 2020. Realizing it has a one-year grace period to file a patent application from the initial for-sale date, the company hastily files a PPA for product X on January 1, 2021. On January 1, 2022, before the PPA expires, the company files a detailed NPA including claims for products X and XY. The NPA claims benefit to the January 1, 2021, PPA filing date. This scenario could be disastrous for the company.

During patent prosecution claims to product X are rejected, but claims to product XY are allowed. Since product XY was not described in the PPA, claims to product XY are not entitled to the PPA’s January 1, 2021, filing date and will instead receive the January 1, 2022, filing date of the NPA. Since product XY was on sale more than a year before the NPA’s filing date, claims to product XY are invalid because of the 1-year bar date. All the company received in return for thousands of dollars of legal fees is an unenforceable, published patent conveniently providing its competitors with details necessary to manufacture products X and XY.

The PPA’s relaxed filing requirements may create an impression that the PPA does not need to be drafted with the same level of care and consideration as an NPA. The opposite is true. Failure to comply with the enablement requirement in the PPA could result in an unenforceable patent down the road. This is the enablement trap.

Avoiding the enablement trap

To help ensure a PPA contains enough description to fulfill the enablement requirement, the PPA should be drafted with invention claims as if it was an NPA. It is much easier to ensure there is sufficient disclosure for the claimed invention in the written description of the invention when the invention claims are created.

However, drafting claims requires identifying the invention, analyzing the prior art, and distilling the difference between the invention and existing technology. This is often a time-consuming process. If you are hiring a patent professional to draft the PPA, the price difference between a PPA and an NPA would likely be negligible. If, on the other hand, the price quoted for drafting a PPA is substantially lower than the NPA, you should carefully consider what kind of PPA you will be receiving. You don’t want to order half-pound roast beef and end up with a bunch of baloney.

Some clients, however, may be early in their product development and are not ready to invest in higher legal fees to protect their product. Some clients simply do not have the funds to file a comprehensive PPA. Other clients may be forced to file a patent application quickly because their invention is going to be publicly disclosed sooner than expected.

For these situations, it makes more sense to quickly draft a PPA with the invention details available at the time. The PPA filing should be viewed as one of a series of PPAs. Each PPA in the series should detail new product developments not captured in previous PPA filings. Before the expiration of the initial PPA filing, an NPA should be filed claiming benefit to all the PPA filings in the series. To the extent that budget and time permits, the applicant should still attempt to draft patent claims that cover the invention and include sufficient written support for the claims. This strategy helps reduce the risk that claims in the NPA are not adequately supported by the PPA.

Conclusion

PPA filings are sometimes perceived as a cheaper alternative to NPA filings. But no matter how you slice it, the written description of a PPA must adequately support the priority claim of an NPA. If your goal is to obtain enforceable patent protection rather than simply being able to print “patent pending” on product materials, PPAs can often cost more in the long run.

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