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In June 1995, an important set of changes was made to the U.S. patent laws. One of these changes involved the creation of a new type of patent application, previously not available in the United States — and a curious creation indeed: the provisional patent application. Under the amended law, 35 U.S.C. � 111(b), a provisional patent application needs no claims, does not get examined, does not issue as a patent, and is regarded as abandoned 12 months after its filing date and cannot be revived. A provisional application is required to include a specification containing an enabling written description of the invention and the best mode contemplated by the inventor for carrying it out. What is this creation, and what is it good for? Among other things, it makes an excellent new tool for protecting e-commerce and similarly fast-developing technologies. The basic idea of the new law was to allow an inventor to preserve his priority in an invention while delaying formal examination of his application for a period of up to one year. It allows an inventor, for example, to mark his invention or advertising with the legend “patent pending,” and, as long as the provisional application is followed up within one year by a regular patent application claiming the benefit of its filing, to take the invention to market while substantially preserving U.S. and foreign rights. Generally, in all countries, the public disclosure or use of an invention either renders the invention unpatentable or starts the clock running on a grace period by the end of which a patent application must be filed or rights to the invention will be lost. The filing of a provisional application stalls the starting of this clock and preserves the patentability of the invention. Provisional applications are now 5 years old. By legal standards, they are a new tool. While some court decisions make reference to provisional applications — for example, in connection with the status of a patent application as personal property or as evidence in a trade secret case — to date, no published court decision has addressed the scope or requirements of a provisional patent application. Similarly, legal commentary has been sparse. Nevertheless, several observations about provisional patent applications may be made. One important benefit of a provisional patent application is that it is not examined during its one-year pendency. This one-year period can give an inventor crucial time in which to gather additional data, or to complete testing or development of an invention, or to investigate strategies or possibilities for taking the invention to market prior to seeking formal examination. Moreover, during that intervening year, improvements may be added by means of additional provisional applications filed as the improvements are developed. This is especially useful because, as the filing fees for provisional patent applications are substantially lower than those for utility applications and no examination costs are incurred, a series of provisional patent applications can be filed at a significantly lower cost than a series of continuation utility applications. Of course, at any time during the one-year period a regular utility patent application can be filed in view of circumstances such as completion of product or process development and successful commercialization, or if potential infringement is discovered. The ability to follow or build on a first or subsequent provisional application with another provisional application can be especially useful in protecting rapidly developing technologies like those associated with the computer, e-commerce, the Internet or medical technology fields. A provisional application may be used, for example, to protect a software product in beta-testing. A provisional application can be filed prior to the beginning of the testing, with one or more additional applications being filed as improvements or refinements are developed. When the final functional version of the invention is defined, a single regular utility patent application may be filed, and may refer to or claim the priority of any number of provisional patent applications — as long as that single regular application is filed within one year of the earliest of the provisional set. An important and sometimes overlooked caveat to use of the provisional application, however — particularly by casual inventors — is that the description of the invention contained in the provisional application must meet most of the same difficult standards that a regular patent application filed at the time of the provisional would have to meet. It is to be expected that the courts will enforce the description requirement for provisional applications just as rigorously as they have in regard to regular patent applications. Thus, a provisional patent application should contain as full and complete a disclosure of the invention, including the best mode known to the inventor at the time the application is filed, as possible. Apparently, because provisional patent applications are not required to contain actual claims and because they are not formally examined — or therefore scrutinized for completeness by the Patent Office — some inventors have thought that the provisional patent application was the quick, cheap route to patent protection. Indeed, applications could be (and likely were) filed with little more than promotional brochures and a cover letter identifying the material as a patent application. This may be a dangerous approach. Anything not included in the original disclosure of the provisional patent application, such as explanatory material or diagrams, is entitled only to the priority of the date at which it is added — that is, the date on which an application describing them in full, clear, concise, and exact terms is filed. This could result in the effective filing date for a complete invention being later than that of the first provisional application. If public disclosure or use of the invention occurred before the filing date of the additional subject matter, patentability could be affected, particularly in foreign countries. As a last resort, provisional applications can be useful for last-minute filings in the face of potential bar dates. As mentioned, making an invention public or putting it on sale renders the invention unpatentable in much of the world. Sometimes, however, inventors fail to realize the importance of patenting their invention until just prior to taking the invention to market. Provisional applications can help in such situations where it is not possible to prepare a regular utility application, for example, because necessary information cannot be timely provided to the patent attorney, or where there is insufficient time to consider available information and prepare a patent application. Where preparation of a utility patent application is technically possible on short notice, an inventor may opt for a provisional patent application to avoid the typically higher costs involved with preparing a utility patent application on a rush basis. For example, since claims are not required in a provisional application, the time required for drafting of the application and for review by the inventor can be reduced. But for many reasons the rush filing of patent applications can be risky. A better use of the provisional application is to defer filing and examination for periods of up to one year. In proper circumstances, the provisional patent application can be a powerful tool for the protection of intellectual property. But not all circumstances are proper, and an attorney should carefully discuss with his client the advisability of using them. Matthew Marquardt is an associate in the Patent Group of Brown, Raysman, Millstein, Felder & Steiner LLPin New York.

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