Special Considerations

A little known fact is that in the United States, you can begin selling a product without first filing for a patent, file a provisional application up to a year later, and then file the regular utility a year after the filing date of the provisional application. The effect is to gain a two-year grace period. One downside of waiting the extra year is the loss of the ability to file patent applications to the invention in foreign countries.

The most important and least understood aspect of the provisional application is that it must disclose all of the elements set forth in the claims of the later filed utility application. That is, the description of the invention must include enough detail for others to make or use the claimed invention in the later filed utility application. Moreover, if the later filed utility application is challenged, and the written description in the provisional is found inadequate, all could be lost.

A utility patent application is often written by drafting one or more of the claims first, so as to capture the invention in full, in all its possible variations, and in a way that a competitor cannot circumvent by making only unimportant and insubstantial changes. From these claims, a detailed written description of the invention can be crafted to form the basis of a patent specification. The patent specification also includes drawings showing the invention, a summary of the invention and a discussion of prior art. Ultimately, the specification may contain more than what is claimed, but it can’t contain less. If the patent is ever challenged, the specification is used to interpret the meaning of the claims.

A few years ago, the U.S. Court of Appeals for the Federal Circuit, handed down a decision in New Railhead MFG, LLC v. Vermeer Mfg. Co. invalidating New Railhead’s patent. The Railhead’s patent covered a drill bit for horizontal drilling in rock. Railhead sued a number of patent infringers using similar drill bits. Ultimately Railhead lost because its utility patent was invalidated on the basis of the claimed drill bit defining a structural feature that had not been fully described in the provisional application. Therefore, the provisional application was not applicable to the relevant claims and not available for its all-important filing date. This caused New Railhead’s utility patent to be rendered invalid because it was filed more than a year after the drill bit (initially disclosed in the provisional) was sold.

The decision means that, although the provisional application does not require claims, it must clearly and exactly describe the invention and the manner and process of using it, in order to support the claims made for it in the later utility application. But without the claims, how can a provisional be drafted to support them?

The solution is straightforward. Put more effort into the provisional application, no matter how rushed for time. Consider the broadest scope of the invention and ensure that it is covered by the provisional. This may require more money up front for the services of a patent attorney, but the much higher cost of having the patent invalidated later easily justifies the expense.


Howard M. Cohn & Associates has extensive and varied experience in all aspects of Intellectual Property law, with a unique specialty in patent and trademark preparation and prosecution. Schedule an appointment or call us at 800-613-1067.