Back in an earlier post, we noted that provisional patent applications are often viewed as “the poor man’s patent application.” Looking at the $530 versus $125 respective filing fees (for small entities), its not hard to see why provisional applications are so popular. The provisional patent application is a useful tool in developing a product and/or business, and may have an even more important role since the America Invents Acts (“AIA”) passed. This is because, under the AIA, an inventor generally must show a prior filing to obtain priority over another party (i.e., the United States is now a “first to file” jurisdiction and no longer is a “first to invent” jurisdiction). Nevertheless, prospective applicants should remember that a provisional application is basically a place holder.
Although the provisional application will not be examined (other than for filing informalities), an applicant should include as complete and developed a “story” of the invention as is possible. This is because, among other reasons, any “new matter” in a subsequent utility patent application will not be entitled to the earlier filing date of the provisional application.
The “new matter” caveat can be especially important where an inventor wants to disclosure information (e.g. at a trade show or conference) and also wants to file foreign patent applications. Most foreign countries do not have a grace period for public disclosure. Thus, if there is material that was disclosed but was not included in the provisional application, the inventor may have forfeited foreign patent protection as to the new matter.
So, while its tempting to view the provisional patent application as a “quick and dirty” way to get on file, use caution and consider, to the extent possible, your future plans and intended business strategy when having the application prepared. Also, although the filing procedure is not horrendous, we always advise consulting with a professional patent attorney to determine the best strategy for your particular set of circumstances.