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In 1995 Congress amended
the Patent Act to provide for a new kind of patent application called the
"provisional patent application" (PPA). Some people refer
to this as a "provisional patent," but that couldn't be any
further from the truth. The PPA is not a patent and it confers no
patent protection. It is a provisional application. In
order to obtain the protection of the U.S. courts for your invention, you
must have a valid patent, and that requires filing a Regular Utility Patent
Application (RPA).
After a lot of initial hype and awe, many patent professionals are coming
to their senses with respect to PPAs. The idea behind the PPA is
that it is a relatively cheap way to obtain a filing date -- that's all it
is. Traditionally, the filing date was the day you file a valid RPA,
but now that date can be extended back in time for up to a year by filing
a PPA. For example, if you file a valid RPA on June 1, 2004, then
that is your filing date. This is an important date in terms of
potential court fights over infringement and calculating patent fees,
etc. But if you filed a valid PPA on June 1, 2003, and if that PPA
disclosed the same invention claimed in your RPA, then under the new law
you are entitled to a filing date of June 1, 2003 -- up to a year prior to
your "real" filing date.
The attractive feature to independent inventors is that the PTO only
charges about 25% as much to file a PPA as to file an RPA. This
gives the mistaken impression that it is cheap protection. Also, the
PPA is not examined because there are no claims, so there is no
refusal. You can file just about anything you want and call it a PPA
-- handwritten notes, pictures of your dog, even your dog's handwritten
notes, and the PTO will accept it as a PPA.
What the patent professionals are just now realizing is that the PPA must
be drafted as carefully as an RPA in order to be of any value.
That's because in a court fight in which you claim the date of filing your
PPA as your filing date, the judge will read the PPA and determine whether
it discloses everything you eventually claim with your RPA. If the
PPA is deficient, you can lose your earlier filing date, which means you
wasted a lot of money drafting and filing your PPA. In other words,
there will be significant costs in drafting the PPA, even though the
filing fees are relatively painless.
It is worth noting that a PPA never decreases the cost of obtaining a
patent. It only increases the cost. Most independent inventors who file PPAs are wasting their money, but it
makes them feel secure having something filed with the PTO.
I recommend filing a PPA in a few situations:
1. You know exactly who you will sell your invention to and you have
good reason to believe you can close the deal within six
months. This is a very rare situation for individual
inventors, but if you're lucky enough to be in it, a PPA gives you some
security in making your disclosures. Get a non-disclosure agreement
just the same.
2. You need money to complete your invention or to pay someone to
draft an RPA. The PPA gives you some security in disclosing your
invention to potential sources of funding. Again, get a
non-disclosure just the same.
3. You have disclosed your invention publicly and if you don't get a
filing date quickly you will lose all of your patent rights. After
you make a public disclosure of your invention, including an offer to sell
it in the market-place, you must file a patent application within a year
or you lose all rights to a patent. If time is getting tight and you
don't have an RPA ready to file, a PPA can be filed relatively quickly in order to extend
that deadline for up to an additional year.
Go to the PTO web site to learn more about PTA's. www.uspto.gov
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