What is wrong with provisional patents?

[fullife]

I think I read in someone's post something to the effect of 'friends don't let friends file provisional'. And in general, I get a feeling that a majority of the people don't like provisional patents.

Could someone explain what is wrong with provisional patents?

I'm thinking of filing provisional patents year after year until I feel like my competitors know what I'm doing and then filing for a non-provisional patent when that happens. Theoretically, it seems like this strategy would give me the most competitive edge in doing business. I wouldn't want to "waste" that competitive edge while I look for financing and doing project construction.

By the way, I would want to file the same provisional application every year, unless I come up with some innovations that I would like to include, in which case I would file a new provisional even if it hasn't been a year since my previous application.

Will this work?

[MYK]

I think I read in someone's post something to the effect of 'friends don't let friends file provisional'. And in general, I get a feeling that a majority of the people don't like provisional patents.

Could someone explain what is wrong with provisional patents?

Your whole post is a running commentary on what is wrong with them.  The strategy you outline won't work the way you apparently think it should, so you'll waste money and lose your patent rights.

I'm thinking of filing provisional patents year after year until I feel like my competitors know what I'm doing and then filing for a non-provisional patent when that happens. Theoretically, it seems like this strategy would give me the most competitive edge in doing business. I wouldn't want to "waste" that competitive edge while I look for financing and doing project construction.

By the way, I would want to file the same provisional application every year, unless I come up with some innovations that I would like to include, in which case I would file a new provisional even if it hasn't been a year since my previous application.

Provisionals are use-it-or-lose-it.  If you have publicly disclosed your invention (which you seem to be doing, since "[your] competitors know what [you're] doing"), then the clock starts ticking on the invention becoming public domain.  Your provisionals cannot claim priority to any earlier document, so two years after public disclosure and the expiration of the later provisional, your ideas can be used freely by anyone.

Improvements that you have made, but not publicly disclosed, might still be salvageable from the most recent unexpired provisional, at least until you disclose them and let another subsequent provisional lapse.

It seems like what you're trying to do is the old Lemelson "submarine patent" trick -- let your ideas get into general use, then WHAM reveal your hidden patents.  Doesn't work any more, and Lemelson is a big part of why.

[bartmans]

While MYK has commented on the US side of things, there is also an (international) srgument: this strategy can not be used if you want to file your patent overseas and profit from the priority date of your last provisional.
According to the Paris Convention a priority claim is only possible if it is the first application in which the invention was mentionede. Your strategy involves the use of earlier provisional filings, and thus your last provisional is not the first application. (Whether or not earlier filing would be traceable does not matter).

[MYK]

While MYK has commented on the US side of things, there is also an (international) srgument: this strategy can not be used if you want to file your patent overseas and profit from the priority date of your last provisional.
According to the Paris Convention a priority claim is only possible if it is the first application in which the invention was mentionede. Your strategy involves the use of earlier provisional filings, and thus your last provisional is not the first application. (Whether or not earlier filing would be traceable does not matter).

Are you sure?  I thought that only mattered if the application published;  since expired provisionals don't, the information is still secret (assuming the inventor didn't disclose publicly in some other manner).

[JimIvey]

I think it's my signature that started this thread, so I'll offer my 2 cents.

First off, I might have missed it but I didn't see it pointed out that provisional patents don't exist, only provisional patent applications (PPA).  A provisional application is like a provisional ballot; it doesn't count unless you do something more.  So, you can think of a provisional application as an incomplete application that won't do anything at all unless you complete it.

Here's where most people get themselves into trouble.  The standard for legal sufficiency is exactly the same for provisional and real (non-provisional) applications.  So, if you want professional help with your real application but think you can file just about anything you like and call it a provisional application, you're making a huge mistake that you might not be able to recover from (in terms of patent rights).

A lot of people think legal sufficiency of the PPA doesn't matter because it's not examined.  That's wrong.  PPAs are examined, but only if their filing date is needed to predate prior art asserted in the corresponding RPA (real patent application).  Then, the PPA is examined and its legal sufficiency is very important.  If the PPA is not legally sufficient, that's not fixable.  You lose your patent rights and everyone can use your technology for free.

Re bartmans and MYK:  If I understand the OP correctly, he wants to file PPAs within 12 months of one another so that he can claim priority back several years if he likes.  However, a PPA cannot claim priority of another PPA, so that just won't work at all.

MYK might be thinking that, since all prior PPAs have expired, the last-filed PPA can still be a priority document under the Paris Convention.  However, I believe the Paris Convention says something about all other applications for the same invention have to have been killed off before the filing of the "first" application.  I've never heard anyone argue over that language in the Paris Convention, so I don't know how strictly it's enforced.  However, if your most recent PPA is filed before the previous PPA has expired, the language of the Paris Convention suggests that the most recent PPA will not be considered the "first" application for the invention.

Regards.

[fullife]

Provisionals are use-it-or-lose-it.  If you have publicly disclosed your invention (which you seem to be doing, since "[your] competitors know what [you're] doing"), then the clock starts ticking on the invention becoming public domain.  Your provisionals cannot claim priority to any earlier document, so two years after public disclosure and the expiration of the later provisional, your ideas can be used freely by anyone.

Improvements that you have made, but not publicly disclosed, might still be salvageable from the most recent unexpired provisional, at least until you disclose them and let another subsequent provisional lapse.

It seems like what you're trying to do is the old Lemelson "submarine patent" trick -- let your ideas get into general use, then WHAM reveal your hidden patents.  Doesn't work any more, and Lemelson is a big part of why.

There is no public disclosure on my part. When I do enter the market, my competitors will be able to deduce my design.

I think it's my signature that started this thread, so I'll offer my 2 cents.

First off, I might have missed it but I didn't see it pointed out that provisional patents don't exist, only provisional patent applications (PPA).  A provisional application is like a provisional ballot; it doesn't count unless you do something more.  So, you can think of a provisional application as an incomplete application that won't do anything at all unless you complete it.

Here's where most people get themselves into trouble.  The standard for legal sufficiency is exactly the same for provisional and real (non-provisional) applications.  So, if you want professional help with your real application but think you can file just about anything you like and call it a provisional application, you're making a huge mistake that you might not be able to recover from (in terms of patent rights).

A lot of people think legal sufficiency of the PPA doesn't matter because it's not examined.  That's wrong.  PPAs are examined, but only if their filing date is needed to predate prior art asserted in the corresponding RPA (real patent application).  Then, the PPA is examined and its legal sufficiency is very important.  If the PPA is not legally sufficient, that's not fixable.  You lose your patent rights and everyone can use your technology for free.

Re bartmans and MYK:  If I understand the OP correctly, he wants to file PPAs within 12 months of one another so that he can claim priority back several years if he likes.  However, a PPA cannot claim priority of another PPA, so that just won't work at all.

MYK might be thinking that, since all prior PPAs have expired, the last-filed PPA can still be a priority document under the Paris Convention.  However, I believe the Paris Convention says something about all other applications for the same invention have to have been killed off before the filing of the "first" application.  I've never heard anyone argue over that language in the Paris Convention, so I don't know how strictly it's enforced.  However, if your most recent PPA is filed before the previous PPA has expired, the language of the Paris Convention suggests that the most recent PPA will not be considered the "first" application for the invention.

Regards.

I don't want to claim the priority to my earliest application.

For example, let's suppose that I file my provisional application tomorrow on 5/14/15. I will keep filing the same provisional on 5/15/16, 5/16/17...so on and so forth, until:

(a) I am able to enter the market and capitalize on my patent, or
(b) Some one else files a patent to my idea, but I will be able to claim priority.

Expanding on (b), let's say that Company X files a patent on my idea on 6/1/16. They would not be able to get priority because I would have filed a provisional on 5/15/16. Once that happens, I will file a non provisional application immediately and maintain exclusive ownership of my idea.

Does this make sense? I know that you guys have replied, but I don't think I specified my strategy? clearly enough.

In any case, the whole point of me doing this is because my invention will take a lot of financing by other people, I would have to have some legal right to exclusivity of practicing it. But I don't want to "waste" my exclusive rights while I look for financing and during the construction phase of the project. I would like to exercise my exclusivity when I am able to get the economic benefits of it.

I will be filing my provisional with a patent attorney as well so that I don't run in to any legal traps down the road. It will also ensure that my claims are drafted in a proper manner.

On a side note, what are some of the questions I should ask my attorney before deciding on who to hire?

Also, what is a better idea? Hiring the same lawyer to do everything related to patents? Hiring one lawyer for filing and until my patent is approved and then a different lawyer for when someone decides to challenge it further down the road?

Sorry for so many questions and thank you all for your replies.

[JimIvey]

Expanding on (b), let's say that Company X files a patent on my idea on 6/1/16. They would not be able to get priority because I would have filed a provisional on 5/15/16. Once that happens, I will file a non provisional application immediately and maintain exclusive ownership of my idea.

Does this make sense? I know that you guys have replied, but I don't think I specified my strategy? clearly enough.

In any case, the whole point of me doing this is because my invention will take a lot of financing by other people, I would have to have some legal right to exclusivity of practicing it. But I don't want to "waste" my exclusive rights while I look for financing and during the construction phase of the project. I would like to exercise my exclusivity when I am able to get the economic benefits of it.

I see two problems with that.

First, courts abhor stretching patent terms outside of the ways provided by statute.  So, you'll probably lose your patent due to some form of laches (use it or lose it).  The closest to your situation was a pre-AIA case in which the patentee protected the invention by trade secret until a competitor developed the same technology.  They filed their application 6 years after the technology was invented.  They lost their patent due to laches.

Second, any and all publications around the world qualify as prior art that can invalidate your claims.  In addition, invalidating prior art isn't always immediately recognizable as such.  I don't think you can realistically expect to catch any and all invalidating prior art that comes out such that you could safely let your priority date slip a year.

I think your strategy is clever, but I don't see it having much of a chance for success.

Since the legal standards for PPAs and RPAs are the same, there isn't (shouldn't be) much of a difference in cost to prepare and file.  In addition, delaying filing of your RPA delays its issuance.  It already takes 3-5 years (typically) or more to get your patent.  Delaying filing by a year makes that 4-6 years or more.  It's much easier to get funding when you have issued patents, so you might do well to try to get your patent issued as soon as possible.

You generally don't want your patent attorney litigating your patent.  You patent attorney/agent would likely be called as a witness and it's awkward to have one of your litigators be called as a witness in the litigation.

Regards.

[mhgy]

In addition to Jim's points, there is another problem that I see with your proposed strategy.

Patent applications are not published until 18 months after their earliest priority date, i.e. you cannot "see" what Company X has filed until well after they have already filed it. This means that by the time you know that Company X has filed a patent on your idea, it is too late to file a nonprovisional to maintain exclusive ownership of your idea because the maximum length of time that you reach back is 12 months (your latest-filed provisional).

... and that is assuming that Company X has not filed a nonpublication request. If a nonpublication request has been granted for Company X's patent application, then you would not know about it until it issues as a patent and once it issues as a patent, it likely has a priority date extending several years into the past.

To answer your other questions, I would want the same lawyer or firm handling both the drafting and prosecution of an application because I think that familiarity with both the client and the subject matter is important when it comes time to prosecute the application, but many firms specialize in either prosecution or litigation - so choosing one firm to prosecute and another firm to litigate is not an issue. I would not expect to have to litigate your eventual patent BTW. Only a very small percentage of patents are ever litigated, i.e. it is not just "part of the process" to litigate your patent, so I would choose a firm that I was confident could adequately draft and prosecute my patent application and not be concerned if they were a top-flight litigation firm too.

As to what to ask a lawyer, I think that fee structure and expected costs are always good to ask about. If a lawyer was just telling me about costs related to drafting and not telling me that there would be additional costs down the road for prosecuting the application, that would raise a red flag to me. I would also want to know about the prosecution process in general, e.g. how likely is it that the application gets rejected, what does it mean when an application gets rejected, etc. Also, I would want to know whether the attorney has drafted patent applications in this art area before. It is not explicitly necessary and someone who does not have experience in the art area is perfectly capable of writing a good application with proper research/time/inventor interaction and someone who has experience in the art area is perfectly capable of writing a crap application... but it helps. Also, it is always good to know what your money is getting you. When you get an Office Action are they going to take an initial look at it and advise you what to do? Or are they just going to notify you of the OA and not look at it until you pay anything? Etc. Those are some things off the top of my head.

[JimIvey]

In addition to Jim's points, there is another problem that I see with your proposed strategy.

Patent applications are not published until 18 months after their earliest priority date, i.e. you cannot "see" what Company X has filed until well after they have already filed it. This means that by the time you know that Company X has filed a patent on your idea, it is too late to file a nonprovisional to maintain exclusive ownership of your idea because the maximum length of time that you reach back is 12 months (your latest-filed provisional).

Yes, of course.  Can't believe I forgot about that.

US patent applications are prior art as of their filing date, not their publication date.  So, if you see a newly published US patent application, it's prior art as of about 18 months ago.  Any newly issued patent that was never published as an application would be prior art as of a few years ago.  Any non-expired PPA would be useless to get around either.

Regards.