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Provisional Patent Applications (PPA)

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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, particularly patent promotion rip-off companies, refer to this as a "provisional patent," but that couldn't be further from the truth.  The PPA is not a patent and it confers no patent protection.  It is a provisional application.  It does not give you any patent rights.  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 Patent Application (RPA).

Furthermore, in order to get any benefit from a PPA you must file your follow-on RPA within one year of the date you file your PPA.   

The idea behind the PPA is that it is a relatively cheap way to obtain a filing date -- that's all it is.  It holds your place in line until you can file an RPA.  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, 2011, 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, 2010, 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, 2010 -- 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 nothing to examine and no costs associated with responding to an examiner.  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.  It may not hold up in court, if necessary, but the PTO will accept it.

What many 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 money drafting and filing your PPA.  

What this means is that in order for a PPA to have any value, it must be drafted as carefully as a regular application.  

It is also worth noting that a PPA never decreases the cost of obtaining a patent.  It only increases the cost.  I feel that 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 before making your disclosures to companies who are interested in your invention.  Get a non-disclosure agreement from the prospective buyer before your disclose your invention just the same.  

2.  You need to raise 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 are still in the development phase but you believe your competitors are gaining on you.  In this case you can file serial PPA's as your invention evolves.  Each new feature of the invention is added to the latest PPA.  You can file one every month if you wish, and then when you file an RPA within a year of the first PPA, you can cite all of those PPAs. 

4.  You have disclosed your invention publicly and if you don't get a filing date within a year of that disclosure, 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 PPA's.  www.uspto.gov