When used appropriately, provisional patent applications (PPAs) are an inexpensive way for technology transfer offices to protect IP while they begin to market it to outsiders. In addition, PPAs buy inventors and TTOs an extra year of time to further develop the science before a non-provisional patent application must be filed with the USPTO. However, legal experts emphasize that shoddily prepared PPAs can come back to haunt TTOs later on in the game. And some busy TTOs tend to lose sight of the fact that PPAs are, quite frankly, a waste of time and money when they are prepared so routinely that little thought goes into whether or not the underlying IP merits further development.
It’s an easy trap to fall into because PPAs are much easier to draft than non-provisionals, and at a cost of less than $1,000 they are far cheaper to file. However, the low cost without the accountability can be a double-edged sword, stresses Libby Hart-Wells, PhD, executive director of commercial ventures and intellectual property at the University of Maryland in Baltimore. “The provisional is not examined. It just goes into a file at the patent office. It is a placeholder. You could literally submit a napkin to the patent office and they would put it on file with a provisional application number,” she explains. However, Hart-Wells urges TTOs to remember that if the IP turns out to be highly valuable, then the quality of the provisional patent application becomes very important. “If you have filed a document that is crummy, and it will be the foundation for your entire patent portfolio later, then you are building a house of cards,” she says. A detailed article on best practices for filing PPAs appears in the April issue of Technology Transfer Tactics. To start a subscription and access the full article, plus three years of archived articles filled with tech transfer success strategies, CLICK HERE.