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What is a Provisional Application?
A provisional application is an application that is filed with the U.S. Patent Office and designated as a provisional application. A provisional application holds a priority date for one year, but is not examined by the Patent Office. The provisional application can preserve patent rights if an invention is publicly disclosed or if another person makes a similar invention after the provisional is filed.
WVU’s expectation is that if a provisional application has value, a regular (utility) patent application will be filed within one year claiming priority to the provisional application. In order for the utility application to benefit from the provisional filing date, the provisional application must describe the invention in sufficient detail to enable a person of ordinary skill in the art to make the invention. The utility application can include improvements to the provisional application, but anything not described in the provisional application will not benefit from the provisional filing date.
The provisional application enables WVU to preserve patent rights, defer patent expenses and it enables the inventor to further develop the technology during the provisional year. Additionally, it enables the OTT to market the invention with the expectation of licensing the invention and funding additional patent applications. The provisional year enables the OTT to better determine the commercial and technical value of the invention.
What Happens after the Provisional Year?
Within one year after the provisional application filing date, OTT must decide whether or not to file:
- a non-provisional (utility) US patent application claiming priority to the provisional application, and/or
- a Patent Cooperation Treaty (PCT) application (which preserves foreign rights).
Unlike a provisional application, the non-provisional application is reviewed by a patent examiner and therefore incurs ongoing expenses after the initial filing. Typically, the OTT Associate has used the year following the provisional filing to assess the market more thoroughly and to try and identify a licensee. If these efforts have been unsuccessful, the commercial interest in the invention is usually unlikely to change. Under most circumstances, the OTT Associate will choose to file a non-provisional application based on a provisional application only if there is a licensee or if a company has expressed overwhelming interest in an invention.
If the invention is not disclosed, another provisional application can be filed, but it will not benefit from the original provisional filing date.
What Happens after a Regular (“Utility”) U.S. Patent Application is Filed?
Utility patents are examined in the patent office to determine whether the application is patentable. After about 18 months or longer after the utility application is filed, the Patent Office issues an Office Action. Usually the Office Action includes a rejection based on the examiner’s perception that the claims lack novelty or are obvious, or that there are other issues with the application. Most applications are rejected, and often the patent attorney can successfully respond to the Office Action to overcome a rejection. If the attorney is unable to convince the examiner in the response, the application may be rejected numerous times by the examiner, resulting in years of prosecution in the patent office. During this prosecution, the OTT should continue to evaluate the value of the invention in view of any amendments and arguments made during prosecution.
Patent Cooperation Treaty (PCT) applications
PCT applications preserve patent rights in many countries around the world. A PCT application can either claim priority to a US application if it is filed within 12 months of the priority date. Because PCT and international patents are expensive (each country collects fees for patent protection), WVU limits the number of PCT applications that are filed to inventions that are licensed or deemed commercially valuable in several countries. Most of time, the United States is the largest market for commercial products covered by WVU patents. Because of this, OTT would need significant commercial interest to justify pursuing a PCT without a licensee.
PCT applications receive a search report and primary examination before entering National Phase, so a better determination of patentability is understood before entering into a national phase. But PCT applications do not directly issue as a patent, and these are not “international patents”, but merely an application to preserve filing rights in multiple countries. Additionally, the delay provides additional time for marketing an invention.
National Phase applications
If a PCT application is filed, within 30 months from the original filing date (usually 18 months after the PCT filing), WVU must decide whether or not to file National Phase applications (i.e., a patent in specific countries) directly in selected foreign countries. In total, non-US patent protection can cost $200K or more (depending on the number of countries selected). These costs include attorney fees, translation costs and national fees. By the time the decision is made for National Phase filing, OTT has been trying to find a licensee for the invention for over two years. If after this time, it is highly unlikely that commercial interest will change. Therefore, under normal circumstances, WVU does not file National Phase patent applications unless a licensee to reimburse patent costs.
In the alternative, a National Application (in a selected country) may be filed directly in a selected country within a year of the US priority filing. As in the US, National Phase applications undergo examination, which usually includes one or more rejections. Examination often takes 2-5 years, after which a patent may issue on a country-by-country basis if the invention is deemed patentable.
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