The Risks of Using Presentation Slides as Your Provisional Patent Application
A provisional application is a quick and inexpensive way for applicants to establish a U.S. filing date for their invention which they can claim in a later-filed non-provisional application (filed within twelve months of the provisional application). As provisional patents are not examined, there are few formal requirements. Provisional applications can be filed without patent claims, an oath or declaration, or any information disclosure (prior art) statement. On account of the few formal requirements involved in filing a provisional application, some inventors (when faced with a patentability bar trigger such as an upcoming public disclosure) file provisional applications consisting solely of a print out of presentation slides describing their invention. Because such a filing often consists only of the Patent & Trademark Office cover sheet included along with existing presentation materials, it is often referred to as a “cover sheet provisional.” As summarized below, applicants should be cautious about adopting this method.
Let’s first look at why applicants choose to file provisional patent applications:
Benefits of Provisional Applications
Provisional patent applications, when prepared properly, can be a quick and easy way for applicants to establish a filing date without the cost of hiring a patent attorney. Because of the limited formal requirements for provisional, it is often far less expensive to file a provisional application than it is to file a non-provisional. Accordingly, applicants can save money by filing a less expensive provisional application, then using the year to better understand their invention and/or its commercial potential before investing in a more expensive non-provisional.
Another reason for filing a provisional application is that provisional applications essentially extend the term of your patent by one year. The duration of a patent is twenty years from the filing date of the non-provisional application. Since the date of the provisional application is not used in calculating the expiration date, it is possible to extend the duration to twenty-one years by filing the non-provisional application one year after the filing of the provisional application. This tactic may be particularly important in the pharmaceutical industry where pharma patents are most valuable in the last few years of their term. Furthermore, all provisional applications extend the one year disclosure or public sale grace period, providing the applicant additional time to experiment, perfect an invention, find investors, determine sales potential, find parties interested in licensing the technology, etc., before filing his/her non-provisional application.
As mentioned above, in order to limit expenses and because they are often in a rush to file an application prior to an imminent public disclosure, applicants may be tempted to file a cover sheet provisional consisting of a deck of presentation slides. This presents several significant risks.
First, in order to obtain the benefit of any provisional application’s filing date, the claimed subject matter in the non-provisional application must be fully described and enabled by the disclosure in the provisional application. Enablement and description are legal standards (set forth in section 112 of the Patent Act) that can be difficult to meet without the help of a trained patent attorney or agent. Most well-drafted patents have numerous pages, figures, and a detailed description of the particular aspects of each figure in order to fully enable and describe the patent claims. The major drawback to submitting simply a deck of presentation slides as a provisional patent application is the fact that the slides may not contain enough detail to sufficiently support the claims included in the subsequently filed non-provisional application. If a claim is not adequately enabled and described by a provisional patent application, then the claim does not benefit from the provisional filing date. Accordingly, any public disclosures subsequent to the provisional filing but prior to the non-provisional filing may negate the validity of such a claim.
Second, often, the true invention is only fully understood when the patent claims are drafted during the process of working with a patent attorney or agent to prepare a patent application. This is because it is during claim drafting that the inventor is able to distinguish his invention from prior inventions, and envision alternatives that may not have been considered previously. Accordingly, even if a cover sheet provisional sufficiently supports the invention the applicant has in mind at that time, it might not support other valuable embodiments of that invention that could have easily been identified during a more comprehensive drafting process. In the situation where a provisional patent application does not enable or describe a particular valuable embodiment of an invention, the patent agent or attorney drafting the non-provisional application has no choice but to add new description to the non-provisional, losing the priority date established by the provisional application.
Third, the above risks are compounded by the fact that public disclosures of an invention are likely to occur in the year between a provisional filing and a non-provisional filing. This is because a provisional is typically filed prior to an imminent public disclosure. Therefore, a cover sheet provisional application made from presentation slides should serve only as a last-resort option when an imminent presentation does not allow time to prepare a more robust provisional application.