Is your provisional patent worth anything?

How much?We made a bold prediction in September, 2014 (How to Lose Your Billion: The America Invents Act) about how the AIA would wreak havoc in the patent market, especially in the University technology transfer sector. This not only applies to universities but it applies across the board for individual inventors and small businesses as well.

The practice of filing provisional patent applications without proper research of prior art and often times filing a “paper clip application” does not do justice to the invention. The challenge when you are filing a patent application is you don’t know if the invention will become the next billion dollar drug. If you look what is unfolding with the University of Pennsylvania drug Juxtapid, you recognize the risks as described in the IP Watchdog article of March 13, 2016.

The practice of filing provisionals is something that has been done in a resource crunched environment where the universities typically file a quick “paper clip” provisional patent application.  The idea behind that is to achieve the following:

  1. Extend the life time of the patent by one year – By filing a provisional the overall life of the patent is extended by one year to a total of 21 years.
  2. Protect the priority date of the invention – Especially after the US has become a first to file country from what used to be a first to invent.
  3. Take care of the immediate need of protecting – In many instances the faculty member might come to the TTO the day before the presentation or sending out a publication.
  4. Save cost of filing a non-provisional patent application – A provisional filing as “small entity” costs only $130 as opposed to spending $5,000 – $15,000 for a regular non-provisional patent application.

As you can imagine, if a patent which is relying on a provisional patent application does serve as the basis for a successful product, the provisional application will then be closely reviewed. In other words if you a claiming priority to the provisional patent application and the the provisional was submitted without much due diligence then you are in a bit of trouble!

Basic things to look for before applying for the provisional:

  1. Novelty – is the invention novel under §102? Performing at least a search on the basis of the invention disclosure does give some idea about prior art. Obviously, performing a deep semantic analysis gives you a pretty good idea about the landscape.
  2. Obviousness – Much harder to provide an obviousness standard but nonetheless very critical under §103. Here you have to rely on the judgement of the faculty member who is submitting the invention OR rely on your staff internally who are perhaps knowledgeable about the field. You could also perform predictive analytics to find prior art.
  3. Invention disclosure is complete – Some of the invention disclosure forms at universities such as Columbia are very well structured. That is a good starting point to ensure that the invention disclosure is well “fleshed out”. The invention is well captured in that submission.

Having said that, universities will often find themselves in a situation where it is impossible to avoid filing a provisional. What resources can they use to ensure higher quality of provisional application submission?

  1. Interns – For universities use at least 8-10 hours of intern time to look for prior art.
  2. Predictive analytics – Searching tools today have gotten a lot better than what they used to be. Many commercial products are available in the market for performing searches. Next generation predictive analytics are also hitting the market which rely on artificial intelligence and deep machine learning.
  3. Library resources – There are free resources through various library searches that would give you much better results than Google searching. Some examples are:
  • Scifinder
  • Medline
  • Pubmed (free for everyone)
  • Having said that, Google Scholar + Google Patents (Interestingly many of the commercial products rely on a far inferior set of prior art than Google and charge substantial fees. One of the best kept secrets unless you really dig deep into it).

You might not be able to file a full blown patent application when you are filing a provisional, but at least make sure you add some amount of diligence to overcome significant challenges down the road. Keep in mind if the invention never becomes a blockbuster there is no problem, if it becomes the billion dollar product you don’t want to be the one who filed that provisional application!

The Author

Dr. Dipanjan “DJ” Nag

Dr. Dipanjan “DJ” Nag is the Chief Investment Officer at Ventech Solutions, a healthcare technology company that manages quality data for the Center for Medicare and Medicaid Services (CMS). He has successfully led Ohio State University, Rutgers University and University of Nebraska’s technology transfer operations that included licensing, startup and investments. As an entrepreneur he led a number of start-ups in the intellectual property strategy, artificial intelligence, and medical device space. As a consultant in patent monetization and intellectual property strategy he has worked with many Fortune 500 companies, universities, and national governments. He was a Director of Ocean Tomo and a Vice President at ICAP Ocean Tomo leading patent transaction markets. He was recognized as one of the top IP strategists by IAM300 in 2019. DJ was on the Board of AUTM from 2012-14 focused on educating the members around world the importance of technology transfer and intellectual property. He is widely recognized as a global intellectual property strategist working with government and universities in Poland, Japan, India, Turkey, Brazil, South Korea, Ukraine and many other countries. Currently he teaches intellectual property strategy and negotiations as a Professor of Practice at Rutgers University and a Visiting Professor at Shizuoka University. He volunteers as the first Executive-in-Residence at the Dublin City Schools leading a startup academy for high school students and serves on the foundation board at the Dublin Methodist Hospital.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 2 Comments comments.

  1. Anon March 15, 2016 9:30 pm

    Dr. DJ,

    I hope that you do not mind my repeating my comment directly here:

    I fully expect that these types of challenges will be multiplied in an era of “file as quickly as possible” in light of those who do not follow a more strict approach to provisional patent application preparation.

    One of the pitfalls of such provisional preparation is that provisionals do not require claims – and yet (admittedly tactics do vary), most patent attorneys I know approach the aspect of writing claims as a primary driver of writing the application to support those claims.

    If one has NO claims in mind whatsoever, it really becomes a roll of the dice to rely on provisional filings.

    Quick and cheap – but not critically tied to whatever claims that end up being enforceable – just is not worth even the cheap amount spent.

  2. Night Writer March 16, 2016 10:35 am

    Anon @1: what drives the provisionals is the need to disclose the invention. So, often the question is not whether to file, but how much money to put in filing. It is a tough game. What I see is companies spending some money, but not much for me to put together a provisional, and then they select from the provisionals which ones they want to convert. It is a tough game with slime margins and it is easy to make a mistake when you only have a several hours to put together an application. But, I do a lot of provisionals. Close to 100 a year. And write over 50 utility patents a year.