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Patents Corner
Provisional Patents Can Buy Time
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by Becky Mahurin
Among the changes to the U.S. patenting system with the General Agreement on Tariffs and Trade (GATT) is the addition of a "provisional patent." A provisional patent is one that can be filed quickly and that provides for temporary (one year) protection for inventions specified in the filing.
A provisional filing is meant to be an abbreviated means of protecting an invention. It does not require inclusion of claims, but it does require specifications including description of the entire scope of the anticipated patent. It also must be enabling to one who is skilled in that field. And U.S. and foreign filings must be completed within one year of the provisional filing.
A provisional patent is primarily viewed as a mechanism to buy time. First, as the filing fee is lower than for a regular patent, it allows one to buy a year in which to determine if the invention has commercial value. For a university this is especially important, as patenting dollars are in short supply, and many universities do not file for a patent unless a licensee is on board to pick up patenting costs. One must remember that over time, this increases the cost of patenting by a nominal amount as one must still pay the normal cost of a standard filing.
A provisional patent also adds one year to the total patent coverage. Patent coverage runs for 20 years from the date of filing. However, when a provisional is used, that time does not start until the standard patent is filed. For an invention that may become a commercially viable pharmaceutical, the extra year of coverage can be very valuable to the patent holder.
An inventor must keep patent counsel updated on any improvements or additional findings, as a provisional only provides protection for what is included in the scope. If a researcher publishes or otherwise discloses additional findings prior to inclusion in the patent, then foreign patenting is barred and U.S. patenting must be filed on these additional claims within one year.
If you have questions regarding provisional patenting or if you have filed a provisional and believe you have information that would support additional claims, please contact me at 994-7868.
Becky Mahurin
Director of the Technology Transfer Office at MSU
© 2000 Montana State University-Bozeman
Discovery November 1996
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