In the Canadian startup community, a common and perpetuated piece of advice given to entrepreneurs is to self-file their initial patent application. Often, this advice involves self-filing a United States provisional patent application. Due to the lack of formal examination of provisional applications, entrepreneurs can file these types of applications without much familiarization with patent practice or drafting. When the provisional application is required to be formalized in a year’s time, the entrepreneur can then retain the services of a patent agent or firm to fill in the gaps of the provisional application and file the formal patent application. This strategy has the advantage of substantial cost savings at the outset because the entrepreneur will initially only incur the government filing fee; as the legal fees are deferred until formalization a year later.
However, while self-filed provisional applications have definite cost advantages, there are concerns to this approach for which entrepreneurs should be wary, especially in light of recent developments in the U.S..
An incomplete provisional application cannot be relied upon as the basis for a formal patent application. In other words, it is critical to have a complete description of the invention in the provisional application in order to have the benefit of the provisional application’s filing date. If a provisional patent application is missing some crucial aspects of the invention, the applicant will not be able to rely on the provisional application filing date. For example, this includes circumstances where the inventor provides some general comments about the idea in broad strokes or at a high level, but fails to provide a sufficient description of the idea such that a skilled person could put it into practice. A concern is that one won’t know whether the provisional application’s description was deficient until a later date when reliance on the description is required to establish a priority filing date (the date of filing of the provisional application). If the disclosure was deficient or incomplete, by then it will be too late to fix and the applicant has disclosed the invention to the world without the right to obtain a patent from it. Providing an incomplete provisional could also affect the ability to file a patent application in other countries because certain aspects of the idea may have been previously disclosed in the incomplete provisional application.
In almost all cases, drawings are considered necessary to understand the invention. However, drawings in patent applications often require a necessary structure and coherency with the description in order to provide elucidation on the description. Like the description, in many cases drawings will be required to establish the priority filing date. However, without proper structure and coherence with the description, improper drawings can likewise become a point of trouble down the line when the description is faulted for lack of proper drawings support, or the information provided in the drawings is not considered due to being improper.
Weak Provisional Application’s Effect on a Patent
In a recent case in the U.S. (MPHJ Tech v. Ricoh (Fed. Cir. 2017)), the Court considered the effect of a weak provisional application on a patent issued on the basis of that provisional application. The Court indicated that a low-quality provisional application can end up hurting the owner of the patent. In its interpretation of the patent’s claims, the Court determined that aspects in the provisional application that were removed from the patent can be used to interpret the patent’s claims. Thus, the Court’s determination means that a weakly drafted provisional application can end up being detrimental because the Court can use the changes from the provisional application to the regular application against the applicant.
Benefits of Provisional Applications
While weak provisional applications can, in some cases, be detrimental, as illustrated above, provisional applications when employed properly can be quite beneficial. As is the case for most inventions, inventors will refine and rework aspects of the invention over time. Advantageously, provisional applications allow inventors to protect important aspects of their invention prior to full development of the product, software or process. The regular application can then be filed a year later with the refinements that occurred in the build out or prototype stage. Thus, an important use of provisional applications is to secure a filing date for an invention that, while not be complete, has a disclosure that is concrete enough to be the basis for an invention. Accordingly, it is indispensable to leverage the expertise of a patent professional that is familiar and experienced with the requirements for a complete and strong provisional application such that the above pitfalls of a weak provisional application are avoided.
BHOLE IP LAW is a boutique IP firm located in downtown Toronto, Canada and practices in all areas of IP, including developing business-minded patent strategies for startups, small and medium-sized businesses. BHOLE IP LAW provides competitive fees and, importantly, takes pride in its responsive and advisory approach.
**The information provided herein is a general background of intellectual property law concepts, does not constitute legal advice, and should not be relied upon as legal advice. Bhole IP Law, and the author, make no express or implied representations or warranties in respect of the information, including but not limited to the accuracy of the information. Note that while Bhole IP Law is a firm of Canadian lawyers authorized to practice before the United States Patent and Trademark Office, we are not U.S. lawyers nor lawyers in any other jurisdiction. As such, other foreign counsel may need to be consulted for U.S. or foreign legal matters.**