The Perils of Gaming the Provisional Patent

The US Patent and Trademark Office gives inventors a sort of patenting grace period in the form of a provisional patent. Companies and inventors who think they can exploit this can end up burned.

Protecting an innovation with a patent is an enduring American tradition dating back to the time of Thomas Jefferson. The patent office protects innovators by granting them patents, or exclusive rights to their intellectual property. In exchange, they set rules and collect fees.

With a patent, one has “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States, or importing the invention into the United States. That right is granted for a period of 20 years. After that, the patent-holder can no longer claim exclusive right to profit from his or her invention. This rule is made for the purpose of, above all, fostering commerce.

Many inventors start the patent process by filing what is known as a provisional patent. In the words of the USPTO, a provisional patent is “a patent application that can be used by a patent applicant to secure a filing date while avoiding the costs associated with the filing and prosecution of a non-provisional patent application.” (1.)

Provisional applications are easier and quicker to file than regular (“non-provisional”) patent applications. They are not complicated; they don’t require formal illustrations; nor do they involve formal claims. And they are less expensive. Inventors often file provisionals to hold their place in line while they develop their inventions. Doing so gives inventors one year of “priority” filing, which means that the filing date stands as long as they file a non-provisional patent application within that year.

Provisional patents are also sometimes filed so that an inventor can claim “patent-pending” status during development of a product. Doing so protects the invention while the inventor discusses his or her intellectual property with vendors and manufacturers.It also keeps the information private, affording the inventor ample time to develop without yet disclosing.

After one year, though, it’s time to make a decision: file a non-provisional application and get moving on your invention, or let it go.

You may have heard of inventors who attempt to “renew” their provisional patent over and over, year after year. Perhaps they just haven’t gotten around to actually developing their product or preparing it for market (a natural process that is known as “reduction to practice”).One might reason that an inventor could save time, money and effort refiling that provisional patent for 20 years (which is the lifespan of a patent). After all, provisional patents are never published, so the innovation is kept private.Furthermore, the patent office doesn’t even review it.(2.)No harm, then, in just renewing a provisional indefinitely for the purpose of saving some money, right?

Well, no. While it is true that many inventors or companies re-file provisional applications while fully aware of the risks (described below), and they do so with reasonable certainty that no one else is likely come up with an identical invention during the period their own remains “provisional,” they are also aware that “patent-pending” status is not something that can live on indefinitely.

This is because the day an inventor files a “renewed” (re-filed) provisional patent, they lose their original “priority date,” meaning the new date supersedes any previous filing. The old date, back when they filed their provisional for the first time, is erased. Below is an example in which an inventor ends up cheating himself in an attempt to exploit provisional patenting.

On April 1, 2016, Mr. Schlub, an engineer, files a provisional patent for a cool new musical instrument. Upon his provisional application’s expiration in April 2017, Schlub figures, “Eh, I have patent-pending status, and so why file a [non-provisional] patent? It will by law remain a secret, and even if someone sees it and tries to reverse-engineer my superior work, they won’t be able to.” So he simply re-files his provisional, year after year, thinking it will hold his place in line while saving him money.

During the next couple of years Schlub sells quite a few of these new musical instruments. One day he rents a booth at a trade show to showcase his product and perhaps land a licensing deal. And… score! A big-name distributor loves it and wants to license it. While Schlubby is celebrating at the bar, the distributor observes typical due dilligence by having its lawyers check the patent status of the invention.

Realizing this, Schlub hurries to file his non-provisional (regular) patent application.

And this is the part where he learns about patent rule 35 U.S.C. 102, in which he is dismayed to find that

“A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…”

Unfortunately for Schlub, there will be no licensing deal, because his invention has been publicly used or sold more than one year before his filing date. When was that date? It was not way back when he filed his first provisional patent, as Schlub believed; it was in fact the last time he filed, which was way after he put his instrument up for sale. According to the rule cited above, he is not entitled to a patent, nor is he ever likely to license his invention, because there is no need to license a thing that is in the public domain.

In addition, because the instrument was publicly used/sold, anyone could make one just like it — they just can’t patent it, because, that’s right, it’s in the public domain.

Schlub also operated under the false assumption that his invention could be kept indefinitely secret if he just kept it quiet while continually renewing his (unpublished) provisional patents.

Attempting to get around patent fees by “renewing” provisional patents, year after year, while profiting from the sale of the invention, is not a good idea; it’s a cheap way to try to take advantage of a system that protects intellectual property.


(2.) Actually the Pentagon takes a look at it to see if anything of national security is involved, but they’re not talking either.

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