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Since their introduction several years ago, provisional patent applications, which lack some of the formal requirements of conventional patent applications, have become a popular mechanism for securing a U.S. filing date. Provisionals are particularly useful for securing a filing date while further details and embodiments of the invention are developed. Many patent attorneys and agents, however, have begun taking shortcuts. Some simply attach a cover sheet to an invention disclosure and file it with the PTO. To save filing fees, others combine several unrelated disclosures into one provisional application. It is also common to exclude claims, which are not required, despite their many advantages. These and other shortcuts, however, entail pitfalls. INSUFFICIENT DESCRIPTION As with all patents, 35 U.S.C. �112(1) requires a written description that enables one of ordinary skill in the art to carry out the invention and that discloses the best mode of the invention. To receive the benefit of the provisional’s filing date, a claim in a later-filed non-provisional must be supported by the provisional’s disclosure. It is therefore essential to ensure that the provisional is enabling and sufficiently detailed such that if the claims of the non-provisional are narrowed to avoid prior art, support for the narrowed claims will be found in the provisional’s disclosure. OVERLY NARROW DESCRIPTION Provisionals are commonly written the way that many inventor’s disclosures are written — they describe one or two specific embodiments and do not include claims or a summary of the invention. This may lead to an overly narrow description. For example, a hypothetical invention disclosure might describe an alloy made with equal amounts of titanium and iron, with the addition of 1 percent to 3 percent lead and 1 percent nylon. Such a disclosure might not provide support for a claim in the corresponding non-provisional that changes “nylon” to “polymer,” omits the presence of the polymer component or broadens the percentage of lead or nylon. Thus, although a provisional need not include claims, it is a worthwhile exercise to draft claims (even if they are not labeled as such) for provisionals in both a broad and detailed fashion, and to include several dependent claims relating to various combinations of the invention. This helps ensure that the provisional contains adequate support for claims of widely varying scope in the non-provisional. The exercise can also expose the need for drawings or flow charts. LOSING TRADE SECRETS The provisional will become part of the public record if and when a corresponding patent is granted. If the provisional contains multiple disclosures, some of which do not relate to the invention of the non-provisional, but instead should have been maintained as trade secrets, the trade secret status of this information will be ruined. It is better, therefore, to file separate disclosures as separate provisional applications. INCONSISTENCY If a corresponding patent is litigated, differences between the provisional application and the non-provisional application will become fodder for dispute. Due care should be taken to ensure that the provisional is factually correct and will not contradict the non-provisional. This requires thought about what additional material might appear in the non-provisional. FOREIGN FILING — DOCKET CONTROL Many attorneys are accustomed to filing a conventional application and then, toward the end of the one-year grace period, mailing copies of that application to foreign attorneys to file in their respective countries. However, converting a provisional that is merely a sketchy invention disclosure into an application suitable for filing around the world will take more lead time than that required to convert a non-provisional. FOREIGN FILING — INVENTORSHIP While the identification of the inventors in the provisional might not affect the U.S. non-provisional, it can affect foreign applications. Most foreign countries permit companies to file applications in their own names. However, many require identity of the applicant of the priority application and the foreign application. An assignment at the time of the filing of the provisional can eliminate some of the potential inventorship issues that arise in certain foreign countries. (An assignment can also eliminate potential difficulties with the U.S. non-provisional if one or all of the inventors no longer work for the assignee.) FOREIGN FILING — LICENSES If one waits until just before the one-year anniversary of the filing of the provisional to file both the domestic non-provisional and the corresponding foreign applications, foreign filing license problems may arise. Specifically, if the non-provisional includes substantial additions to the provisional, it may be necessary to obtain a new foreign filing license before filing the foreign applications. Although there are provisions for requesting the grant of an expedited foreign filing license, the procedure can be harrowing. Therefore, waiting until the 11th hour is unwise. STARTS CLOCK TICKING Where a first provisional is filed with a sketchy disclosure and a more complete provisional or a non-provisional is filed shortly thereafter, the first provisional may start the one-year time limit for filing in the European Patent Office and elsewhere — even if there is no desire to rely on the original filing date. Thus, the filing date of even fairly general provisionals should be taken into consideration when calculating foreign filing deadlines. Provisionals are a good way to delay prosecution costs and a somewhat more cost-effective way to obtain a filing date (at least in the short run). Although the above procedures will increase their cost, it is money well spent. Matthew W. Siegal is counsel in the Intellectual Property Department of the New York office of Pitney, Hardin, Kipp & Szuch, LLP. He may be reached at [email protected].

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