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Friday, August 21, 2009
Inside Life Sciences
The risk and reward of provisional patent applications
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Cost, especially in the current business environment, permeates patenting strategy for life sciences companies. One area where this issue is particularly acute is in preparing and filing a provisional patent application. Often, the expectation is that a provisional patent application will be inexpensive. While this may be achievable, the adage “you get what you pay for,” rings true.
Let’s briefly review the basics of provisional patent applications. These applications last one year, and the U.S. Patent and Trademark Office does not examine them. Essentially, a provisional patent application establishes a filing date for the invention. During the one-year pendency, an applicant files a second, non-provisional application that the Patent Office will examine. In doing so, the applicant has an opportunity to supplement the disclosure with new developments. The non-provisional application relies on the filing date of the provisional application for its priority date. But, in order for the priority date to be effective, the disclosure in the provisional application must support the claims sought in the non-provisional application.
A company uses provisional patent applications in two primary ways. First, if public disclosure of the invention is imminent or has occurred (a potential bar to patenting the invention) and there is little time to prepare a robust patent application, a company might simply file what it has, such as a journal article, along with a few claims. This strategy has the twin benefits of potentially establishing a priority date, and costing relatively little.
There is a risk that the provisional application may not support the claims later sought because there was not enough time to adequately describe the invention, but this is a situation of doing the best that one can do given the circumstances at the time.
Second, if development on the invention is ongoing, but an earlier priority date is desired (for example, because of a planned upcoming disclosure, either public or private), a company can file a provisional patent application to obtain a priority date while allowing another year to generate further data and refine the invention. In this second scenario, the question becomes: how much work should go into preparing the patent application?
If the invention is a cornerstone of the company, a situation familiar to many early stage life sciences companies, you have only one chance to get it right. If the patent application ultimately fails, the company might fail. In this situation, it may be wise to put the resources of the company behind this piece of intellectual property. The patent that ultimately issues claiming the benefit of this patent application will protect the value of the invention and the company.
With inventions that are less important to the company or in situations where many facets of the technology can be patented, the importance of which are not yet known, it may make sense to expend fewer resources in preparing provisional applications. Filing the application allows for further work on the technology during the one year pendency and it may allow time for the importance of the facets of the technology to come into focus. If important, more resources can be devoted to a non-provisional application on the important facets.
Of course, this strategy comes with risk. By not doing all one can do to ensure that claims of interest will be supported, there is a risk that a public disclosure of the technology will bar the claims. This is a cost/benefit analysis that the company must conduct with eyes wide open. Moreover, once the company chooses a lower-effort provisional patent application, the company cannot let the passage of time fool it into thinking that patent rights are secure. The patent application is only as good as the work that went into preparing it.
The quid pro quo for security in a provisional patent application filing is effort and completeness, which translates to cost. Companies need to make strategic decisions based on their own circumstance on whether to file provisional applications and, if so, what level of resources to put into preparing the application.
Daniel Wilson is senior counsel in the Boston office of Goodwin Procter LLP.
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