WEB PATENT NEWS--October, 2001

by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.


I. PROVISIONAL PATENT APPLICATIONS: MYTHS AND MISUNDERSTANDINGS--Experience has shown that the perceived limitations of provisional applications are unfounded.

II. SMALL BUSINESS INNOVATION RESEARCH CONFERENCES--Learn how obtain seed capital for development and testing of your inventions.


Since the creation of the U.S. provisional patent application by Congress in 1994, a number of myths and misunderstandings have grown up around this new vehicle for protecting inventions in the U.S. This article attempts to dispel some of them.

Myth No. 1: Less than full disclosure is required in a provisional patent application. Many inventors who have filed cursory provisional applications are dismayed when they are informed by the USPTO Examiner examining their subsequent regular applications that the disclosures provided in their provisional applications do not support desired claims in a regular application. The minimal level of disclosure in a provisional application and a regular patent application are exactly the same. Both must include a written description of the invention, both must enable a "person having ordinary skill in the art" to make and use the invention and both must include a description of the best way of practicing the invention (the "best mode"). Just as it is prudent to include paraphrased versions of patent claims in the Brief Summary of the Invention section of a regular application (which type of application must contain at least one claim), it is also prudent to include "claim-like" descriptions in that section of a provisional application (which does not have to contain a claim). If, for example, the provisional does not make it clear that the inventor believed he had invented ("had possession of") some version of the invention (e.g., an apparatus, a system, a subsystem, a composition, a method of operating, a method of making, etc.), then the written description requirement for that embodiment will be deemed lacking. Moreover, that hypothetical person having ordinary skill in the art must be able to build and use any version of the invention the inventor desires to protect (and always the best version, at a minimum) based solely on the disclosure of the provisional patent application (and that person's knowledge of the background art, which is assumed to be exhaustive).

Myth No. 2: Only one provisional patent application can be filed. Too many inventors delay filing their first provisional applications until they have conceived a very refined version of their inventions, with all the "bells and whistles" in place. They do not understand that a first provisional can be filed containing a disclosure of the basic invention and then subsequent provisionals can be filed during the 12-month pendency period of the first provisional to add later-conceived improvements. In fact, when the provisionals are prepared on a word-processor in the format of a regular application, the disclosure can evolve over time with interim versions being filed and culminating in the filing of the document as a regular application. In fast-moving fields, like software, this can be particularly important.

Myth No. 3: New matter cannot be added to subsequent regular patent applications. Just as new matter can be added to "continuation-in-part" (CIP) regular applications, new matter can be added to a regular application that relies on one or more provisional applications to establish priority of invention. Any claim in a regular patent application has an effective filing date that is the same as the actual filing date of the first application (be it a provisional application or a parent regular application) that adequately supports the claim. That means that prior art references (publications, patents, public uses, offers for sale, etc.) that occur after each priority-establishing application can be "used against" any claim that has a later priority date, but a reference cannot be used to reject any claim that has an earlier priority date than the reference. So, there is no need to file a separate regular application (and eventually pay multiple maintenance fees) for each provisional that is filed. Moreover, recent legislation now allows provisional applications to be relied upon in establishing priority of invention in a chain of subsequently-filed continuing (or CIP) regular applications. For you patent law "policy wonks," the legal reason this myth is not true is that criteria for priority stipulated in 35 U.S.C. 120 (which relates to continuing applications) and 35 U.S.C. 119(e)(1) (which relates to provisional applications) are now very similar. It is still true, however, that only utility (technology) and plant patent applications can claim priority in provisional applications. Design patent applications cannot.

Myth No. 4: The term of regular application starts on the filing date of the provisional. In fact, the filing of a provisional extends patent protection for up to 12 months because the term of the subsequent patent starts on the actual filing date of the first regular application that relies on the provisional. An inventor gets up to 12 months of additional "patent pending" status if the provisional route is used. It is true that a patent can only be enforced after it issues (but publication of a regular application can extend the period during which royalties are due as explained in my July, 2001, newsletter). Only if the provisional is "converted" to a regular application (which is usually not a good idea) does the 20-year term of the subsequent patent begin on the filing date of the provisional.

Myth No. 5: Filing a provisional application allows the inventor to delay for more than 12-months the filing of international, regional or foreign national applications. While the filing of non-U.S. patent applications is rarely worth the substantial expense of doing so, on occasion (when a substantial non-U.S. market for the invention is known to exist) it is critical. Many inventors assume that the old (pre-provisional) rules apply and that non-U.S. applications can be filed 12 months after the subsequent regular U.S. patent application is filed. While that is true if a provisional has not been filed, it is false if one has been filed. In fact, an inventor must file international or foreign applications within 12 months of the filing date of the U.S. patent application upon which he is relying to establish his priority date. An inventor cannot rely on the filing date of a second (or subsequent) provisional application, because it is only the first application (that has not been abandoned before filing of the non-U.S application) that can be relied upon to establish a priority date under the Paris Convention (the agreement among nations that creates the 12 month "window"). Of course, if an invention has not entered the prior art (under the rules of any particular foreign country in which the inventor is interested in obtaining a patent), he can still file a patent application in that country and obtain a patent. Some foreign countries, however, have very strict rules about novelty of invention. Almost all prohibit enabling publication or offers for sale before filing. Some will even deny a patent if an oral disclosure has been made before filing, which is ordinarily not a problem in the U.S.

While the foregoing reveals that provisional patent application practice does have traps for the unwary, it is clear that filing an adequate provisional application is almost always a good idea, unless an infringer is currently selling products that embody your invention. The advantages of having a patent practitioner assist in preparation of the provisional application are also evident. Inventors with limited financial resources will benefit from the deferral of the costs associated with a regular patent application (e.g., a review of the background art that argues for patentability, higher USPTO fees, formal drawings, preparation of computer-readable sequence data, etc.). Also, entrepreneurs can proceed with their commercialization efforts with "patent pending" protections in place prior to public disclosure or offers for sale. In time, this "new" technique will be more widely understood and its many advantages recognized.


The Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) programs of the U.S. Government provide over $1 billion of seed capital to U.S.-owned small businesses (less than 500 employees) that are developing and commercializing new technologies that meet national needs. There is no better way to learn how to compete for funding than to attend a conference at which Federal program managers (your potential customers) will be in attendance. Two such opportunities are available this month.

The National SBIR Conference is being held at the Ramkota Hotel in Rapid City, SD, during the period October 23-26, 2001. You can learn about the conference at www.SBIRworld.com

The Seventh Annual Hawaii SBIR/STTR Conference is being held at the following locations: October 29, 2001, at the Waikiki Beach Marriott Resort on Oahu; October 30, 2001, at the Renaissance Wailea Resort on Maui; November 1, 2001, at the Outrigger Waikoloa Resort; and November 2, 2001, at the Kauai Marriott Resort on Kauai. A tour of facilities of the Natural Energy Laboratory of Hawaii Authority (NELHA) on Hawaii will occur on October 31, 2001. You can learn about the conference at www.htdc.org/sbir/hsbir2001/

I will be talking about intellectual property protection options and will be available for one-on-one sessions at both conferences. I hope to see you there.


Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 1291
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114
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