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Author Topic: Negative Views towards Provisional Applications  (Read 489 times)

Rheo

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Negative Views towards Provisional Applications
« on: 08-11-18 at 05:09 am »

I know that some patent attorneys have a negative view of provisionals.

In my mind, a plus is that you get an extra year to think things over. A negative aspect of provisionals is that many people don't realize that it has to be "enabling", just like a regular application.

What are the strong negative points that some PAs seem to have?
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ClaimMaster

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Re: Negative Views towards Provisional Applications
« Reply #1 on: 08-11-18 at 11:58 am »

Provisionals should be used sparingly.  They are legitimate if you: (1) are up against an upcoming disclosure (e.g., product goes on sale, public demo, etc.) but do not have sufficient the time to prepare a full utility application or (2) aren't sure about the business/patent value of a specific idea (or maybe expecting it change somewhat) and want to mull over it for up to a year.  For all other situations, I think you are better off filing a regular application.  If you are not up against a short deadline but still want to file a provisional, you'd be better served by filing a mostly complete patent application, so that conversion to utility will be a formality and there will be full/literal support for everything claimed.

Provisional apps give a false sense of security if they don't provide clear support for the subject matter in the non-provisional application. The support better be very clear too - the PTO doesn't really check it all that carefully, but if the patent is ever enforced, the presence of support in the provisional will be scrutinized and unless there is literal support for claims, you might not get the priority date in court.  Definitely will be litigated at length, especially if there is some close prior art that came out during that provisional year period.  That's why it's best to file the provisional in as complete form as possible.  Also, filing a provisional will start the clock for making a decision on foreign filings (if you claim priority to it in the utility), so you'll need to decide whether to file foreign apps within a year of the provisional filing. Finally, if you are in-house and file a lot of provisional apps one year, you are just postponing all of your filing decisions till the next year when you might or might not have the budget to deal with conversions.
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ClaimMaster

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Re: Negative Views towards Provisional Applications
« Reply #2 on: 08-11-18 at 12:06 pm »

Also, don't think you can file a provisional US application if your inventors (or their company) are from certain countries that require the first application to be filed locally (e.g., France).
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Rabid Levity

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Re: Negative Views towards Provisional Applications
« Reply #3 on: 08-11-18 at 12:46 pm »

Also, don't think you can file a provisional US application if your inventors (or their company) are from certain countries that require the first application to be filed locally (e.g., France).


This is somewhat less a concern when you think about the U.S. Provisional application program in its original sense, which is that of a "dummy" first ex-U.S. filing.

Whether your first filing is a U.S. Provisional application or a French national filing, your U.S. Utility application claiming priority thereto has its own 20 year period.

In full agreement regarding your comments about the Provisional application should not be viewed as a "lesser" application but instead should contain everything one has that one would use to support his Utility application.
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ClaimMaster

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Re: Negative Views towards Provisional Applications
« Reply #4 on: 08-11-18 at 11:31 pm »

Quote
Whether your first filing is a U.S. Provisional application or a French national filing, your U.S. Utility application claiming priority thereto has its own 20 year period.

The issue is with timing.  Let's say your client is a US corporation that has an office in France.  The company typically files US provisionals in situations when engineers do not give the lawyers enough time/notice to prepare the utility application before some imminent public disclosure. This works fine when engineers are based in US or most other countries. However, if the engineers are French (or based in some other country requiring first filing to be national), then you must file your first application there. The problem is that the French national filing will be a regular patent application that will publish in 18 months, while the US provisional can remain hidden forever. So while you can probably get away with a quick-and-dirty US provisional, the French national filing will require a lot more time & effort to prepare well - this is the time you didn't have and exactly the reason you'd like to file a provisional app instead. 

I suppose you could still file a US provisional and ignore the French requirement for first filing.  Not sure if those are ever enforced and where'd you enforce them anyway, France?  Anyways, this is an oddly specific and fairly obscure scenario, but it did come up recently, hence I mentioned it in this thread.
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Rabid Levity

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Re: Negative Views towards Provisional Applications
« Reply #5 on: 08-12-18 at 01:12 pm »

Quote
Whether your first filing is a U.S. Provisional application or a French national filing, your U.S. Utility application claiming priority thereto has its own 20 year period.


This works fine when engineers are based in US or most other countries. However, if the engineers are French (or based in some other country requiring first filing to be national), then you must file your first application there. The problem is that the French national filing will be a regular patent application that will publish in 18 months, while the US provisional can remain hidden forever.


I still do not understand the real difference here.  If you decide you do not want to file further application claiming priority to the U.S. Provisional, then as you say it will remain hidden. 

However, in the same vein if you must first file in France due to national law, but then (as above) decide you do not wish to file further application claiming priority to said first filing in France, then one simply withdraws his application prior to the beginning of the technical preparation for publication of the application to avoid such publication at the 18 month mark.  I believe this time point is somewhere around the 15 month mark, but am not positive. 

Of course, if one has decided not to file applications claiming the priority date of the first filing and wishes it to remain secret, the thing to do is to go ahead and effect withdrawal of the application at the time the decision is made, just to be safe.


So while you can probably get away with a quick-and-dirty US provisional, the French national filing will require a lot more time & effort to prepare well - this is the time you didn't have and exactly the reason you'd like to file a provisional app instead. 

This objection I also do not quite understand.  Although we have agreed further upthread that skimpy U.S. Provisional applications should be avoided if possible, I agree sometimes in emergency situations that is the best one can do.  However, a first national filing in France can be as skimpy or "quick-and-dirty" as you say, as is the U.S. Provisional.

There is no difference so far as I can see - either that first application (whether skimpy U.S. Provisional or skimpy first national filing in France) provides support for everything you want it to, or it does not.
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ClaimMaster

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Re: Negative Views towards Provisional Applications
« Reply #6 on: 08-12-18 at 04:38 pm »

I guess it's just more of the inconvenience of it.  Like remembering to explicitly withdraw the French application from publication if you decide to abandon the whole thing.  Or if you do proceed, then dealing with examination of the significantly "less than perfect" application in France.  But you are right, I'm probably overstating the negative effects here.
« Last Edit: 08-12-18 at 05:11 pm by ClaimMaster »
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Rabid Levity

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Re: Negative Views towards Provisional Applications
« Reply #7 on: 08-16-18 at 06:42 pm »

I guess it's just more of the inconvenience of it.  Like remembering to explicitly withdraw the French application from publication if you decide to abandon the whole thing.  Or if you do proceed, then dealing with examination of the significantly "less than perfect" application in France.


Fair points, all. 

Note for reference if you find yourself stuck with a French priority application and do want to go forward with the case overall, you can still claim priority to it, file your PCT designating EPO or directly file EPO, then expressly withdraw the original French application. Still an inconvenience as you note, but at least you do not have to proceed with prosecution before INPI with a less than perfect application.

At least, the last time we were stuck in such a situation, this sort of manoeuvering was permissible.

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bartmans

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Re: Negative Views towards Provisional Applications
« Reply #8 on: Yesterday at 05:20 am »

There are some more disadvantages of US provisionals.

One major disadvantage is that the application is not examined, i.e. no search and patentability opinion is provided within the priority year. This means that you would still be uncertain whether or not your invention would be patentable. This is different, if you would start with a PCT application or with e.g. a European, British, Dutch or Belgian application. In those cases you will be certain that in the priority year a search and opinion is provided on which you can base your decision to go ahead with the actual (foreign) filings. A further advantage of the applications mentioned above is that they may be filed in the English language and no translation is needed (in contrast to the example of the French application where you need to file at least a French translation).

A second disadvantage is that you still need to pay for filing a US provisional (although this is a small amount and does not weigh up against the costs for getting a patent attorney draft). Nevertheless, filing as PCT, European, Belgian, Dutch, French and many other national applications is possible without paying a filing fee. The result is that within short such an application will be deemed to be abandoned, but in contrast to the US system for claiming priority under the Paris Convention the earlier application does not need to be pending. So, if you don't care about a search (which apparently is the case when you would noramlly file a US provisional), you could as well save more money by filing e.g. a European application without paying. Follow-on applications may then be filed claiming a Paris Convention priority.

The only reason why the US provisional should be used is when you are forced to file a US application because the invention was made on US soil. However, you could also avoid the duty to do that if you request a foreign filing license.
In any case, for non-US practitioners it will probably never be advantageous to start with a US provisional application.
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