Advantages of U.S. Provisional Patents Extend from Domestic to Foreign FilersJuly 6, 2022

Regardless of their place of residence, every client should initiate their patent filing in the jurisdiction of the most commercial potential for their product. If a new invention is related to oil production, for example, one might consider filing a patent application in Venezuela, which contains the largest proven oil reserve in the World. Similarly, if a new invention devised in Germany has significant U.S. market potential and does not trigger any national security protections, filing a U.S. provisional patent application rather than a national stage application in Germany may serve a client’s best interests. Foreign applicants increasingly rely on low-cost instruments like provisional patent applications to establish priority, reduce inventive ideas to practice, and secure the earliest possible 102(e) date in the United States.

With the exception of enablement and written description requirements, provisional applications are subject to very few formal requirements. In a recent study, Prof. Dennis Crouch found that around 35% of domestic provisional applications surveyed do not include even a single claim, and about 15% are essentially a stack of presentation materials. While there is no formal requirement that a provisional application include claims, applications lacking claims must ensure enablement, written description, and to a lesser extent, the best mode requirements are satisfied. Notably, the best mode requirement has been abrogated under the AIA patent system. If a provisional application lacks claims, one must also take care to use inclusive rather than limiting language. For example, the phrase “in a preferred embodiment” establishes a broader scope of protection than the phrase “the invention is.” At a minimum, one should incorporate a statement in the description confirming that the description refers only to “a preferred embodiment.”

There are numerous other advantages to filing a U.S. provisional patent application including, but not limited to: term extension, speed, low costs (e.g., a low initial filing fee and lower renewal fees than the E.U.), the ability to file in a language other than English, and the use of sequential provisional filings to iteratively improve inventions. These traditional benefits of provisional application filing were greatly strengthened by the shift of the United States to a first-to-file system in 2013.

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