Patents

4. Preparation of the First Patent Application

(a) Provisional Patent Applications

Since June of 1995, the United States Patent Office has accepted the filing of "provisional" patent applications". Canada now has what amounts to a provisional patent system, although the Canadian patent legislation does not use the term "provisional" to describe incomplete applications filed thereunder. Rather, it has been possible, since 1996, to file applications in the Canadian Patent Office without claims and still receive an official filing date for such an application. The Canadian system is more akin to the system available in the United Kingdom for many years. A provisional patent application has often been referred to as "a poor man's patent", on the basis that it may be cheaper to file. In terms of a dollar analysis, this may initially be true. However, as it is necessary to regularize the provisional application (within a year of the provisional filing date in the US, and within 15 months thereof in Canada) by bringing it up to full formal specification, including the addition of claims, the full costs of filing a regular application cannot be avoided; rather they can only be deferred. Moreover, it may actually cost more to have an experienced patent agent draft the provisional application and thereafter regularize it, as he must again pick up the case some months later, and spend a not-insignificant amount of time getting back up to speed on the invention in order to draft claims properly supported by the specification on file. The issue of such support leads to the primary risk in filing a provisional application. That is, will the provisional specification (typically) drafted in haste and with undue emphasis on low cost, be sufficient to fully support a properly considered set of claims that may not be drafted until some months after the provisional specification is filed? Consider that most patent agents draft the claims of a patent application first, as it is only during this long and mentally vigorous process that the patent agent comes to fully appreciate the essential integers of the invention and their exact relationship to one another. When the claims are completed, the patent agent typically turns to drafting the remainder of the application, paying particular attention to using language in such description that is fully consistent with the well-honed language of the claims. Often more than half of the time spent by the patent agent in preparing a full-application is allotted to claim drafting, although such claims may occupy far less page volume in the finished application. With a provisional application, this normal order of operations is reversed: ie., the detailed description of the invention is drafted before the claim language. What often results is a provisional specification that is couched in language that is insufficient to later support claim language that fully defines the level of protection to which the invention is entitled. Any new subject matter that must later be added to the application to fully support such claims will not receive the original filing date of the provisional application; rather, such new subject matter will only receive a filing date from the date it was first added.

It should also be noted that neither a US nor Canadian provisional patent application will be examined until after it is regularized. Rather, such an application will be assigned a filing date and a serial number, but little else will happen. The US provisional application will go abandoned (without further notice from the US Patent Office) if not formalized within a year of filing, and remains confidential after such abandonment, as if it was never filed. The Canadian Patent Office will send the applicant written notice of formal deficiencies in the provisional application as filed; however it will also go abandoned if these deficiencies are not corrected within the time frame set out in the notice. Moreover, no substantive examination will occur in Canada until such time as the deficiencies are corrected and the examination fees have been paid. Thus, while filing a provisional application will get you a filing date, it will not get you a patent, or even an examined patent application. This leads to the second major disadvantage of filing a provisional application in place of a full-fledged regular application. That is, unless the provisional application is quickly formalized after its filing, there is almost no chance of receiving feedback from even the US. Patent Office in the form of a first office action within the Paris Convention priority year. The benefits of such timely feedback have been discussed above. Accordingly, the applicant will be faced with the prospect of not only regularizing his provisional application within the Convention priority year, but also with the cost of filing corresponding applications (i.e., full applications) in other countries in which protection is required, all without having had any feedback from a Patent Office on the patentability of the invention.

This is not to say that provisional applications do not have their use. Certainly, where an unavoidable first non-confidential disclosure is imminent, such that a regular first application cannot be prepared and filed in advance thereof, a provisional application may have the effect of getting the inventor a filing date in advance of the disclosure, so as to avoid novelty bars that might otherwise arise, as discussed previously. If, for example, an inventor was scheduled to give a speech at a professional conference in several days or weeks, and was worried that such speech might destroy (in at least some jurisdictions) the novelty of the invention described in the speech, he would be wise to file the content of the speech (and anything else that could be conveniently added by way of enabling subject matter) as a US provisional application, and follow up as soon as possible with a full-blown regular application. In this manner, he would receive a filing date for the provisional application ahead of the disclosure which would, likely be sufficient to get behind the public disclosure he made at the convention. The inventor must be cautioned, however, that a provisional application is only as good as its contents. That is, neither the Patent Office nor the courts will add content to an application that was not present on filing. Notwithstanding this, there may be circumstances (such as the example just given) where a provisional filing is better than no filing at all. This being the case, the inventor is well-advised to rely on provisional applications as a last ditch effort, only where absolutely necessary, and to follow-up with a regular patent application meeting all formal requirements as soon as reasonably practical, claiming internal priority on the regular application from the previously filed provisional application.