Since 1995, U.S. patent law has allowed inventors to file a “Provisional Patent Application,” to establish a priority date. A provisional patent application is less expensive because it has fewer requirements, is not examined by the Patent Office, and has lower filing fees than non-provisional applications. With the passage in 2011 of the America Invents Act, which adopted the “first inventor to file” rule in U.S. practice, provisional patent applications have become more popular as applicants rush to get early priority dates. Applicants have been lulled by the reduced requirements into believing that they can file a “half-baked” provisional application to secure a priority date, expecting to file a later, more complete application in which they fix any errors or inconsistencies in the first filed provisional. A recent Federal Circuit decision—MPHJ Technology Investment v. Ricoh Americas, 847 F.3d 1363 (Fed. Cir. 2017)—highlights some of the traps that can arise from employing this strategy. We discuss the legal requirements of provisional practice, the implications of this new case, and best practices for such applications.
Statutory Requirements
Provisional patent applications require only a specification and drawing. 35 U.S.C. §111(b). To claim priority to a provisional patent application, a later non-provisional patent application (either international and/or U.S. national), must be filed within 12 months of the filing of the provisional application. The non-provisional application may augment the disclosure in the provisional with additional data, information, figures, or text, which describe additional embodiments and aspects of the invention.
