Published by Adrian Hocking on 18th June 2013
(Or The Difference Between Provisional And Non-Provisional Patent Applications)
We are often asked by clients whether a ‘quick’ or rough patent application can be submitted in order to achieve a lower cost for patent pending status than undertaking a ‘full’ or complete patent.
Just to clarify, a quick or rough patent application is also sometimes called a Provisional patent application, and may be a brief summary of your invention. A full or Non-Provisional patent application usually comprises the following sections: description, claims, abstract and drawings. In the UK, the claims and abstract, and even the drawings can all be submitted within 12 months after the original description. Similar provisions apply in other territories also, such as the USA. As such, patent application pending status can be achieved with simply a rough description of your invention via this so-called ‘provisional’ application route.
Users of this ‘provisional’ application method may save some initial upfront patenting costs, but are rarely aware of the potentially significant pitfalls and issues with using this route.
One of the key dangers with using the provisional patent application route is the possibility of adding new subject matter when the provisional application is turned into a full or complete patent application. If the patent application process is to continue, this ‘conversion’ or completion stage must take place sometime within the first 12 months after the filing of your original provisional patent application. The completion stage involves adding the claims, abstract and, if necessary, drawings. It may also involve fleshing out the description with more detailed material, examples and options for your invention.
However, the addition of the claims, abstract, drawings and perhaps even modification of the description about your invention all provide the potential to include matter or material which was not explicitly disclosed in the originally filed provisional patent application.
So what, you may ask? Well, a non-provisional or full patent application can only be back dated to the provisional patent application for the material that was originally in the provisional application. The earlier date of your provisional patent application cannot be claimed or linked to for any new material put into the non-provisional or full patent application.
And how does that affect me? Well, you can imagine the scenario: your provisional patent application is submitted, and you have patent pending status. You start talking about your idea to friends, colleagues, manufacturers and potential investors, safe in the knowledge that you have ‘patent applied for’ status. The response is good and the time comes to convert your provisional application and to turn it into a full or non-provisional patent application. The invention is fleshed out in the description, claims and abstract are added, and the figures are redrawn to show the latest incarnation of your invention. The full patent specification is submitted and during examination inventiveness issues are perhaps raised by the patent examiner.
The only way to overcome these issues may be to use the new material added in at the time of submitting the full patent application, because the provisional application was too brief and not fully thought through during preparation. However, you already disclosed the idea to those friends, colleagues, manufactures and potential investors. You are now in a Catch 22! If you use the new material included in your full patent application to overcome the patent examiner’s objections, the patent will grant but will be invalid because of your prior disclosure and because you cannot back date that new material to the earlier filing date of your provisional application. If you do not use the new material in order to try and maintain the link back to your first filed provisional application, then the patent examiner’s objections cannot be overcome and the patent application is refused.
This is the danger. It all comes down to the potential lack of information in your provisional application, the public disclosure of your invention following the filing of the provisional patent application, and then the possible inclusion of new matter or material when preparing the complete or full patent specification later on.
The advice given to all our clients is therefore to have a complete or non-provisional patent specification prepared at the outset. Yes, it will be somewhat more expensive at the outset, but if you are serious about obtaining good quality and robust legal protection for your invention, then it is an initial investment that will not only save you money in the longer term, but also save you many, and potentially patent threatening, problems downstream.