Best Practices for filing a US provisional patent application

In this article I will describe what I think are Best Practices for filing of US provisional patent applications.  

I will emphasize that this article is not about Best Practices for drafting US provisional patent applications. The assumption for the purposes of this article is that the provisional patent application has already been drafted and now what is being discussed is how to get it filed.

The two main points of this article are:

  • Make sure that your provisional application will be available in DAS and PDX.  This includes two sub-tasks:
    • Set up an alert so that you are monitoring the status of the application in DAS.
    • Obtain a Certificate of Availability in DAS and save the Certificate to your file server.
  • Make sure that your provisional is filed with an appropriate Applicant for purposes of Article 4 of the Paris Convention.

I will discuss these points in some detail.

Making sure the application will be available in DAS and PDX. At the time that the application is being filed, you may not be in a position to predict whether the application will later be asked to serve as a priority application. I suggest that in general unless you have some strong reason to think that it is extremely unlikely that the application will serve as a priority application, it is better to proceed so that you are prepared for the possibility that the application at least might serve as a priority application. As such, it will be good to make sure the application is available to the DAS and PDX systems.

There are several different ways to make the provisional application to be available to DAS/PDX.

One way, perhaps the simplest way, is to use a USPTO-provided ADS (application data sheet) such as Form PTO/AIA/014. The ADS contains language that by default authorizes the USPTO to release the application to PDX/DAS (unless you take the step of checking a box that opts out of PDX and DAS). This ADS needs to be in the first EFS-Web session that is filed for the provisional application (meaning the filing in which you learn for the first time what your application number is).

This can be your choice of the fillable PDF form or can be the online web-based ADS in EFS-Web.

A potential drawback to the use of Form PTO/AIA/014 is that you might feel compelled to provide more information to the USPTO about the inventors than is required by the law and rules. It is recalled that the law and rules require the filer to disclose only the city and state (or country) of residence of each inventor. In particular the law and rules do not require that a mailing address or citizenship of the inventor be provided. Form PTO/AIA/014, however, purports to require that the inventor’s mailing address be provided. My suggestion is to bypass this by providing merely a period in the “address” field. This tricks the validation of the form into thinking that an address was provided, while avoiding the need to provide unnecessary information on the form.

Suppose that the application has already been filed and that only now are you attending to the need to make the provisional application available to PDX/DAS. This might happen for any of the following reasons:

  • the application was filed using a provisional cover sheet (which does not provide the authorization for PDX/DAS);  or
  • the application was filed using an ADS but the ADS was created in a word processor (and failed to provide the authorization);  or
  • the application was filed using Form PTO/AIA/014 but the filer failed to provide the ADS in the first EFS-Web session.

In any of these situations, the application will very likely not have been made available to PDX/DAS, and thus you will need to make it available to PDX/DAS. The way to do this is to file Form PTO/SB/39.

Once you have gotten the application filed in a way that should be available to PDX/DAS, the Best Practice is to make sure that the application does actually become available to PDX/DAS. This calls for the following steps.

First, watch to see that the Transaction History in PAIR says “Applicants have given acceptable permission for participating foreign”. In a recent case this happened on July 23, 2018.

Then watch to see that the Transaction History in PAIR says “Application ready for PDX access by participating foreign offices”. In the recent case just mentioned, this took four days, with this status appearing on July 27, 2018.

You would be forgiven for assuming that if the Transaction History says “Application ready for PDX access by participating foreign offices” then of course surely the application will be ready for PDX access by participating foreign offices. Unfortunately, this is not how things work at the USPTO. The way things really work at the USPTO is that when TH says “Application ready for PDX access by participating foreign offices”, this really means “Real Soon Now in a few days the application will be ready for PDX access by participating foreign offices”. If you check DAS to see if the application is available, you will be told:

The priority application number X is not registered. Please be advised that the United State Patent and Trademark Office started as of March 18, 2013 a new DAS registration procedure. You are invited to contact the USPTOs EBC (Electronic Business Center) at 1-866-217-9197 to register your priority document in the WIPO Digital Access Service.

Eventually, maybe in another day or two, the USPTO will actually get around to making the application “ready for access”.  In the recent case just mentioned, this took one more day, with the application actually being ready for access on July 28, 2018.

Anyway so eventually your application will be available to you in the DAS system. You will be able to “add tracking” in DAS. To do this, go to your workbench and click on “add tracking”. Then select the “IP right” which will be “patent”. Enter the “priority number” starting with a two-digit Office code (in this case “US”) followed by the application number. Note that you can actually copy and paste this from PAIR, for example “62/701,975” including the virgule and the comma. DAS will trim out the virgule and the comma.

Having successfully carried out the “add tracking” in DAS, the next step is to download a Certificate of Availability from DAS.  Save it in your file server for this provisional application.

The big payoffs from following these Best Practices are as follows.

Improved data validations when filing a PCT application.  Best Practice for filing a PCT application is, of course, to use ePCT to generate the Request.  ePCT will validate your priority application and filing date by looking it up in DAS.  If a year ago you planned ahead and made sure the provisional application was available to DAS, then this validation will work and you can be quite confident you did not screw up the priority claim in the Request.

Availability of the priority application for purposes of e-filing in RO/IB.  Many sophisticated PCT filers routinely file in RO/IB rather than in their local Receiving Office.  There are many advantages to the use of RO/IB which will be the subject of a separate blog article.  The point here is that if you are in RO/IB you will want to use DAS to obtain the certified copies of the priority applications, and if you made sure your priority applications were available in DAS, then you can proceed very smoothly in RO/IB.

Availability of DAS if you use a Paris path to file outside of the US.  Most filers use PCT to file outside of the US, but sometimes it makes sense to use a Paris path.  In such a case, your standard procedure should include providing a copy of the Certificate of Availability to non-US counsel so that there will be no doubt that DAS can be employed to provide the certified copies of the priority documents.

Applicant for purposes of Paris Article 4.  The remaining Best Practice issue for filing of US provisionals is to make sure to do the filing in such a way that the correct applicant is designated from the filing date.  It is not a best practice for the applicant to be the inventors, and yet the filer who proceeds with a mere Provisional Cover Sheet will achieve exactly that unhappy result.

The things to keep in mind are:

  • Article 4 of Paris requires that the applicant in the second application (for example a PCT application) must be the “same applicant” as in the priority application (or a “successor in title”).   The initialism (not acronym) is SAOSIT.
  • Some Offices around the world have held TYFNIL that a failure to straighten out any SAOSIT problem chronologically prior to the filing of the second application will mean that the priority claim was defective ab initio.
  • In the US if you fail to pay attention to designating a non-inventor applicant, the result will be that the applicant is the inventors (which is almost certainly not what you actually want).

Use of the Provisional Cover Sheet is not a Best Practice.

A first reason that use of the Provisional Cover Sheet is not a Best Practice is that the Provisional Cover sheet (USPTO’s standard form) fails to designate a non-inventor applicant.  This virtually guarantees problems TYFNIL with the SAOSIT issue.

A second reason that use of the Provisional Cover Sheet is not a Best Practice is that the Provisional Cover sheet (USPTO’s standard form) fails to provide access for the application to PDX and DAS.

What do you consider to be Best Practices for filing of US provisional applications?  Do you agree or disagree with what I wrote here?  Please post a comment below.

7 thoughts on “Best Practices for filing a US provisional patent application

  1. If the PPA is filed with inventors as applicant, but then after the original filing date, but before the filing of a PCT claiming priority to the PPA, an assignment of the PPA from the inventors to the Applicant of the PCT is executed and recorded with the USPTO, does that create a problem with SAOSIT? Isn’t the Applicant of the PCT a successor in title of the PPA?

    I agree that using the ADS naming the same applicant is better, but there are circumstances when that just isn’t legitimate, such as the inventors not being under obligation to assign and not able (or not willing) to execute the assignment before the PPA must be filed to meet a bar date.

    • Bruce —

      That ends up being a question of the foreign law of the country that issues the end result patent, and their laws for establishing and recognizing priority. Whatever that country is, I have no license to opine.

      But on first principles, “assignee” and “applicant” are two different things. The PTO treats them as entirely separate. I wouldn’t count on anyone in any other country having benevolent myopia to overlook the difference.

      You don’t need consent from the inventors to correctly designate “applicant” on a Day One ADS. And boy does it save headaches down the line.

  2. Carl, would you also consider it to be a “best practice” for provisional applications to expressly abandon each provisional application shortly after filing the provisional, in the event that one decides not to rely on the first-filed provisional but instead decides to rely on a second-filed provisional application for purposes of calculating the 12-month deadline for filing a non-provisional and/or PCT and/or Paris Convention application? It is my understanding that the 12-month deadline must be calculated from the “first filed” provisional application, but in some circumstances it may be best to calculate that 12-month deadline from a “second filed” provisional application (for example, perhaps the “second-filed” provisional may include more information/data that increases one’s confidence in compliance with the enablement or written description requirement).

    • Thank you for posting!

      For me personally, I find it super scary to expressly abandon any patent application. I squirm to imagine giving up a filing date. If one does as you describe, a whole new 12 months’ worth of prior art becomes available to the Examiner whose job it is to cite that art against your (now later filed) patent application.

      Having said that, I am aware that there are some technology areas (for example some pharma areas) where this “serial abandonment” approach is routine. The company identifies some molecule, files a provisional naming it, and then after 11 months has not yet figured out what the molecule is good for. So maybe they do the express abandonment and file a new provisional, this time hoping that during the next 11 months they will figure out what it is good for, and then file a non-provisional (probably a PCT) directed to that use of the molecule.

      Yes such a company becomes vulnerable to an extra 11 months’ worth of potential prior art, but maybe they think they will get lucky and there won’t be any such prior art.

  3. Get those assignements and record them. A year form now, one or more of the inventors may have left the company and then it is REALLY hard to get an assignment. (Or, when I was at Cantor Fitzgerald, we had a lot of patent applications where we couldn’t get signatures because the inventors were dead.) A provisional is a real patent application. Treat it like one.

  4. Since 37 CFR 1.51 states that a “complete provisional cover sheet” must include “the name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government)” and an ADS does not provide an entry where the government support information may be specified, what do you suggest filing for provisiional applications made with government support?

    • Let’s talk it through.

      If there is a government interest, the filer is obligated to spill the beans about this in the body of the patent application itself. MPEP ¶ 310. Merely providing the provisional cover sheet that you mentioned is no help at all toward complying with this requirement.

      I have described good and sufficient reasons why a filer of a provisional application would almost certainly be remiss to have failed to provide an ADS. That’s just the way it is. What I said is that in my view what is to be avoided is using a provisional cover sheet to the exclusion of using an ADS. If you feel you need to provide a provisional cover sheet in addition to providing an ADS, then so be it. But again, keep in mind that even if you do provide the provisional cover sheet in addition to providing the ADS, this still fails to satisfy MPEP ¶ 310 which requires that the spilling of the beans take place in the body of the patent application.

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