The problem was pretty
simple. By international treaty, an
inventor who filed an application in a country other than the US could claim
that priority date in a US application as long as the application was filed
within a year of the foreign filing date.
In effect, this allowed foreign, but not domestic, applicants to claim a
priority date that was earlier than the filing date of the US application.
In order to give US inventors
a similar ability to “lock-in” an early priority date, Congress authorized the
provisional patent application in 1994.
Because people often, and
incorrectly, refer to provisional applications as “provisional patents,” I want
to make the following clear: there is
no such thing as a provisional patent.
And as a practical matter, provisional applications are not actually
applications. The USPTO takes no action
on a provisional applications and by themselves these applications cannot
result in a patent. The provisional application
provides no protection for an invention.
Until a few years ago,
opinions among patent agents and attorneys I spoke to were divided about the
use of provisional applications. Those
who liked the provisional application would focus on the early priority date,
ability to use the term “Patent Pending,” the low cost, and the 12 month period
to allow for market evaluation. Those
who didn’t like the provisional application would point out that if you had the
information required to write a good provisional application, it would be simpler and
safer to write and file a non-provisional application.
The America Invents Act
settled the argument. Once the US moved
to a first inventor to file system, the ability to get the earlier priority
date trumped all.
While the argument is settled
and the benefits are clear, it is important to remember that bad provisional
applications can cause problems. The two
main pitfalls are:
Provisional applications are not placeholders:
While claims and
bibliographic information need not be provided, the specification and drawings
in a provisional application have to meet the same requirements and standards
for disclosure as a non-provisional application. This is because they form the basis on which
the eventual non-provisional application is built. A poorly written provisional
application can be used later in the process to argue that the invention does
not work or even to argue that an invention is not patentable.
The provisional application
only protects the invention described in the application. Modifications and improvements have to be protected
in later applications with later priority dates.
Finally, assume that drawings
that meet USPTO standards are required in a provisional application. While I realize that USPTO publications say
otherwise, exceptions to the drawing requirements are rare.
The 12 month window is firm:
In order to protect the
priority date of a provisional application, a non-provisional or PCT application
has to be filed within 12 months of the provisional application priority
date. There are no exceptions to this
rule.
To apply for a provisional
patent, an applicant needs to file a specification (without claims), drawings
and a cover sheet.* The current
filing fee for a provisional application is $260.
With the passage of the
America Invents Act, provisional applications have secured a place in the
patenting process. And that is my final
point: the provisional application is a
part of the process and needs to be treated as such. As with non-provisional and PCT applications,
do not try to write a provisional application on your own. Use an agent or attorney registered with the
USPTO.
Below is a summary of
selected patents that have been recently issued in textile related
classification codes:
Method
and apparatus for providing sleeves to an otherwise sleeveless garment: A
method and apparatus for supplying a variety of sleeves for wear with
sleeveless outfits. A bust band with a closure circles the rib cage and the
back. A pair of shoulder straps are attached to the bust band. Sleeves can be
permanently attached or removable.
Patent #: 8650662. Inventor:
Decker. Not Assigned.
Bunting
bag with cover: A bunting bag useable with a child seat to cover a
child. Patent #: 8650663.
Inventor: Fair and
Kummerfield. Assignee: The Boppy Company, LLC.
Garment
for protection from the elements: A
blanket fitted with a hood, sleeves and a seat cushion. Intended to be worn as a protective garment
during outdoor events. Patent #: 8650664. Inventor:
Parr. Not Assigned.
Bottom
periphery length adjustment mechanism: A
band and slide buckle arrangement that can be put in a garment to adjust the
length to the wearer. Patent #: US 8650665. Inventor:
Shirai. Assignee: Builmatel Company, Ltd.
Headgear attachment for
portable audio device: Baseball cap with
compartment and ear bud holes added to accommodate a music playing device. Patent #:
8650666. Inventor:
Crutcher. Not Assigned.
Protective
garment with low friction characteristics:
A protective garment with an outer
shell and an inner liner. The inner
liner is a base material woven of a base yarns and high lubricity yarns. The high lubricity yarns are woven into the
base material to form a plurality of discrete low friction contact areas. Patent #: 8650668. Inventor:
Curtis. Assignee: Lion Apparel, Inc.
Powdered
dye material for concrete surfaces: The invention herein provides for an improved dye
material composed of a dry particulate mixture of azo and phthalocyanine dyes
for concrete surface applications. The
result is a dry powder dye that can be used to dye cured concrete. Patent: 8652219. Inventor:
Howle. Assignee: Ameripolish, Inc.
Article of
footwear with tubular sole assembly and method of manufacture: A shoe sole that uses extruded hollow tubes
to provide cushioning and support to a user's foot. Patent: 8650690. Inventors:
Ungari and Watkins.
Assignee: Nike, Inc.
*Correction: In
a prior post, I incorrectly stated that inventor information and bibliographic
information would also be required in a provisional application. While I would include this information if it
was available, it is not necessary for the provisional application. My apologies for any inconvenience this error
may have caused
Jim Carson is a principal of
RB Consulting, Inc. and a registered patent agent. He has over 30 years of experience across
multiple industries including the biotechnology, textile, computer,
telecommunications, and energy sectors.
RB Consulting, Inc. specializes in providing management, prototyping,
and regulatory services to small and start-up businesses. He can be reached via email at James.Carson.Jr@gmail.com or by phone at (803) 792-2183.
