Provisional Patent Applications

A U.S. utility patent application can be filed for any new or improved process, machine, article of manufacture, or composition of matter. This application contains both the specification, which must enable one of ordinary skill in the art to make and use the invention, and the claims, which define the boundaries of protection and thus, are the essence of the patent. Drafting, filing, and prosecuting a utility patent is a long, labor-intensive, and expensive process. At Licensing and Technology Development (LTD), this process is contracted out to one of a small number of outside firms that were approved by the University’s general counsel and selected by the LTD based upon their field of expertise.

Since June 8, 1995, when the international General Agreement on Tariffs and Trade (GATT) became effective, the USPTO and numerous foreign patent offices have accepted an abbreviated utility patent application called a provisional patent application. The purpose of filing a provisional patent application is to set a “priority” date for the invention (publications occurring after this date cannot be used against the invention by the USPTO). To secure the priority date, a provisional application must contain a detailed description of the invention that is sufficient to enable all future claims that may be made in a corresponding utility application. The provisional application itself, however, does not require any formal claims, declarations, or information on prior art.

With a Report of Invention (ROI) in hand, a Technology Licensing Associate at LTD can file a provisional patent application in nearly the same time it takes for the staff at Ruth’s Chris Steak House to serve up a dinner for two – and for about the same price. Because much of the ROI itself will be filed as part of the provisional application, this report is critical towards fulfilling the above mentioned description and enablement requirements. Included in the ROI should be any manuscripts corresponding to the invention, relevant sequences, and other information that teaches how to make and use the invention.

The timeliness of disclosing an invention to LTD is critical. A patent (utility or provisional) must be applied for within one year following the date of first public disclosure or offer for sale in order to secure one’s intellectual property rights in the United States. But don’t wait this long! Patent law in the U.S. can differ significantly from that in other countries. For example, any public disclosure occurring before filing forfeits your patent rights in many non-U.S. markets, including most of Europe. Filing a provisional patent however, can secure a priority date in the U.S. and in foreign countries that have a ‘first to file' policy as opposed to the ‘first to invent’ criteria that is applied in the U.S.

Once filed, provisional patents have a 12 month maximum lifespan (“pendency” period) during which time a comparable utility patent application must be filed or the provisional application is automatically abandoned. This year is extremely valuable to non-profit patent owners such as JHU. Not only does this time allow JHU to defer the significant expense of having a utility application professionally drafted, but it also allows the LTD’s professional staff to assess the invention’s commercial potential and to market the invention to prospective licensees.

Many factors beyond the scientific merit of an invention influence whether or not the LTD will ultimately seek utility patent protection at the end of the provisional year. Clearly, the cost of patent prosecution is a major consideration in every decision. In certain cases, a patent may not increase an invention’s commercial value, in others, it may not afford adequate protection from others’ “designing around” the invention. Examples include biological materials that are difficult or time-consuming to recreate, and most software programs. It is important to note that even without patent protection, these types of inventions can be marketable and licensable.

To learn more about intellectual property, visit the USPTO website at www.uspto.gov or contact LTD via Greg Schreiber (gschrei6@jhmi.edu) to request a patenting guidebook designed for scientists and other non-legal professionals.

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