Considerations with United States provisional patent applications

1. Provisional applications are specific to the United States (US). They can be used to secure a priority date based on a document and drawings that do not have to meet the same filing requirements and level of detail as a conventional patent application.
2. A provisional application needs to be converted to a conventional application within 12 months, otherwise, the priority date is lost. There is no such thing as a "provisional patent" as the provisional application is never examined and will never issue to patent.
3. A provisional application does not get published. Therefore, if it is not converted into a conventional application, the innovation it covers can remain a trade secret.
4. When a provisional application is filed, "Patent pending" can be used. Keep in mind that the term must be removed if the provisional application is not converted to a conventional filing.
5. Filing a provisional does not save cost, but does slightly delay the investment. In fact, the overall cost ends up being higher at the end. A US provisional application costs US$150 and the conventional filing fee is roughly US$830 (for a small entity). There is no discount when converting a conventional filing from a provisional.
6. When the provisional is filed, it is not queued for examination. Therefore, the time it stays in the provisional state (up to 1 year) delays the issuance of the patent.
7. The benefit of a US provisional application is to secure an early filing date (priority date) while continuing to do research/development. The priority date is used by the examiner to assess inventiveness of the application against existing patents or publications dated before the priority date.
   
   

   Example 1: Let's say you invent a new concept in January, and you file a provisional application to secure it. In May you have made sufficient progress on the invention, so you file another provisional to cover the new elements, and you do the same in September. When the 12-month deadline arrives in December, you combine the 3 provisional applications into one conventional application. In this case, the priority date of the claims will depend on what material the claim refers to. For example, a claim that includes material added in September will be examined against prior art that existed up to the filing date in September.

Key considerations for Canadian companies:

• Be aware that there are risks associated with use of a US provisional application.
• For example, according to Natalie Giroux, President at Stratford Intellectual Property, "A quickly filed provisional application provides a false sense of security. Care should be taken to write at least a few claims to ensure there is proper support in the application for all the essential elements of the invention."
• It is extremely important that the provisional application be sufficiently detailed. Adding information that cannot be supported by what was filed in the provisional opens you up to risk that the validity of the issued patent can be challenged or that the examiner finds more prior art (resulting in the loss or diminishment of your IP rights).
• If filing a provisional application is the best strategy, it is prudent to ensure the provisional application is as close to a conventional application as it can be (basically conventional-ready). Making sure the invention is fully described in enough detail and that any variations and all embodiments have been covered is also important. Note that a PowerPoint presentation is rarely sufficient to provide adequate protection.
• Consider having a patent agent write the claims and take the time to make sure all essential elements are properly included in the description. The time invested at the beginning is not wasted and will greatly increase the value of the final patent.
• Anything disclosed publicly that is not covered in the provisional application will be considered prior art in foreign countries.
• Provisional applications, when done properly, have the advantage of adding one year of protection to the invention. The expiry date of the protection is calculated based on the filing date of the conventional application.
• Keep in mind that it is always a good idea to seek legal advice before deciding how to deal with your Intellectual Property (IP). This will help you make an informed decision and know what to expect.
  
  

  Example 2: Let's say you invent a new type of screw head. You rush to file a provisional patent with various pictures of the screw head and a quick description. You start commercializing the product (the new type of screw along with a matching screw driver) leading to competitors selling knock offs; but you cannot enforce your rights until the patent issues.

  Eleven months later, you decide to file the conventional application. Your patent agent realises that the provisional has no description of the screw driver that is required in order to make the new screw useful. The agent adds all the required material, and drafts a claim that combines the screw and the screw driver (because a screw alone is not deemed useful). When the examiner performs a search, they see the knock-off products from your competitors for sale and cites those as prior art against your filing which prevents the issuance of the patent and you have lost your claim to any IP rights. If the screw driver had been properly described in the provisional, the patent could have issued and the rights to the product could be enforced for 20 years.

Additional information:

• For information about IP protection in the US, please see the Canadian Intellectual Property Office's publication on Doing business abroad: Protecting your IP in the United States
• For more material relating to the export of goods to the US, please see the Doing Business in the United States page
• More information on going global with your IP