Today on Patently-O, Dennis Crouch identified an interesting statistic – nearly half (48%) of all provisional patent applications are abandoned without being relied upon. This number is significantly higher than what I expected and is growing. It is worth considering why this is the case.
First, a quick overview of the differences between a provisional and a non-provisional is in order. A provisional application is merely a “placeholder” in line at the USPTO. It allows the applicant to get something on file that does not meet all the formal requirements (drawings, claims, etc) of a full non-provisional application to secure the benefit of an earlier priority date. The provisional is never available to be inspected by the public, unless it is relied upon in a non-provisional application. Thus, a provisional can be prepared rather cheaply, and there is little risk of it being seen by the competition.
In order to file a non-provisional application, the applicant must submit at least one claim (generally a full set of approximately 20 claims is prepared) and provide formal drawings. The non-provisional can claim priority to the provisional application as long as it is filed within a year from the filing date of the provisional application. Thus, if a provisional application is filed on December 20, 2010 and a non-provisional is filed on December 19, 2011, claiming priority to that provisional application, any prior art dated later than December 19, 2010 would not be applicable in rejecting the claims of the non-provisional application (ignoring complicating matters such as swearing behind).
So why such a high abandonment rate? One reason is that provisional applications are meant to be cheaper and easier to file so that they are easier to abandon. Because they are cheap to file, often applicants will file them early in the invention process and file additional provisional applications as they refine their products. In this case, the non-provisional can rely on multiple provisional applications at once, with each providing the benefit of the priority date for the disclosure therein. However, in certain industries, such as healthcare, the development process takes longer than a year. Thus, by the time the earliest filed provisional application is at the one year mark, the applicant may not yet be ready to convert the application to a non-provisional. In this case, having some later-filed provisional applications allows the applicant to shift the priority date to later dates of the later filed provisional applications gradually.
Still others are simply never converted because it is decided that the technology is not worth the expense of pursuing further or the company itself has failed and gone out of business.
However, there is another, more troubling, class of abandoned applications. While filing a provisional gives an advantage of getting something on file fairly quickly and cheaply, due to the less formal requirements for a provisional application, many are filed without having fully thought out the invention or the details that need to be disclosed. When drafting a patent application, the claims are typically the first thing to be drafted. Next, the drawings and the specification are drafted to provide support for the claims. However, since a provisional application does not require claims, there is often less thought put into determining what is needed in the specification to support the claims. This results in provisional applications that do not provide adequate support for the claims of the non-provisional applications. In this case, there is little reason to rely on the earlier date of the provisional application, since any of the new disclosure in the specification of the non-provisional would be considered “new matter” that is not eligible for the benefit of the earlier priority date of the provisional.
In my conversations with entrepreneurs and company founders, I often hear that the inventors themselves drafted and filed a provisional patent application because they lack the money for a patent attorney. Typically these provisional applications are lacking in the type of disclosure necessary to support proper claims. This holds true especially so in software-based inventions. Due to the requirements set out in recent Supreme Court decisions, such as the In re Bilski case, the form of the language used in a software claim is paramount and the specification must provide support for such claims. It is unreasonable to expect those that are not well versed in software to be able to meet all the necessary requirements. Thus, it is often the case that the provisional applications that are being drafted and filed must be redone wholesale upon conversion. In these cases, it is often simply not worth relying on the defective provisional applications, resulting in their abandonment.
Losing a year of priority due to a defective provisional application may not be a big deal, but in technology areas that are highly competitive, a year can mean the difference between no prior art and a field that is full of applicable prior art. In such cases, it is worth considering whether doing it yourself is being penny wise and pound foolish.