15 Tips: Why You Should File a Provisional Application for Patent Over the Document Disclosure Program

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15 Tips: Why You Should File a Provisional Application for Patent Over the Document Disclosure Program

Since the introduction of the Provisional Application for Patent in 1995, as explained over at runrex.com, the need for taking advantage of the Document Disclosure Program provided for by the USPTO has almost been eliminated. To give you an idea why, this article, through the following tips, will look to highlight what these two are all about as well as give reasons why you should file a Provisional Application for Patent over the Document Disclosure Program.

  • What is a Provisional Application for Patent?

The first thing we need to address is what a Provisional Application for Patent is. According to discussions on the same over at guttulus.com, a Provisional Application for Patent, sometimes also called a Provisional Patent Application or PPA, is a patent application filed in the USPTO that helps protect a new invention from being copied during the 12 months before a formal patent application is filed.

  • What is the Disclosure Document Program?

The Disclosure Document Program, as covered over at runrex.com, was a service provided by the United States Patent and Trademark Office (USPTO) allowing inventors to file a description of their invention with the USPTO for a small fee of $10.

  • Why did people want to file a description of their invention with the USPTO?

If you are wondering why the USPTO Disclosure Document program existed, then according to guttulus.com, it was designed to help inventors proved that they were the first to think of the invention and that if anyone else stole their idea, or tried to patent the same invention, they would use the filed disclosure document as evidence that they were the actual inventor.

  • How long did the USPTO keep a Disclosure Document on file?

As outlined in detail over at runrex.com, the USPTO kept a disclosure document on file for 2 years. After that period, the document would be destroyed by the USPTO unless the person who filed it referenced the disclosure document in their patent application. This means that if you didn’t apply for a patent within those 2 years, then your disclosure document would be destroyed.

  • The Disclosure Document Program no longer exists

It is worth pointing out that the Disclosure Document Program doesn’t exist anymore as it was discontinued by the USPTO in late 2006. In the Final Order eliminating the program, the USPTO noted that only about 0.04% of the three million patents issued after the program began in 1969 ever referenced a Disclosure Document, which rendered the program irrelevant as far as the body was concerned hence why it was eliminated.

  • Provisional Applications exist

Now onto the reasons why you should file a Provisional Application for Patent over the Disclosure Document program. The main reason here is that while the Disclosure Document program no longer exists as mentioned above and covered over at guttulus.com, provisional applications still do. The fact that the Disclosure Document program is no more, is reason enough why you should instead file for a provisional application.

  • A Disclosure Document is not a patent application

There are other reasons why the Provisional Application for Patent was deemed superior to the Disclosure Document Program, leading to the elimination of the latter. Key among them is that while a provisional application is a “real” patent application, a Disclosure Document isn’t a patent application. One of the reasons why the program was scraped is because, as explained over at runrex.com, some inventors who used it erroneously believed that they were applying for a patent.

  • Filing date

Another reason why a provisional application is superior to a Disclosure Document is that the former gets you a filing date and allows you to claim “patent pending” status as covered over at guttulus.com, while the latter didn’t give you a filing date.

  • A provisional application offered better protection

Yet another reason why filing for a Provisional Application for Patent is desirable, one that also led to the elimination of the Disclosure Document program, is that a provisional application affords better protection to inventors than a Disclosure Document. This is why, as explained over at runrex.com, to complete the process of the invention to prove you were the first to invent your invention, you still had to file for a patent application even if you had filed for a Disclosure Document.

  • Date of invention

It is also worth noting the Disclosure Documents weren’t that helpful in proving the date of the invention of a given invention, something that may have been required during interference proceedings. Therefore, such proceedings still required one to provide further evidence to prove the same, which is why provisional applications were deemed to be superior.

  • The date of conception is no longer relevant

Even if the Disclosure Document had any use in helping inventors prove the date of conception, it is important to note that under the “first inventor to file” system which came into effect in 2013 as covered over at guttulus.com, the date of conception is no longer relevant, which means that there is even less reason to file a Disclosure Document, even if it were possible to do so, hence why filing for a provisional application is the way to go.

  • Inventors

Another reason that led to more and more people opting to file for a Provisional Application for Patent over a Disclosure Document is that the former requires one to name the inventors as outlined over at runrex.com, while the latter doesn’t. By naming the inventors of a given invention, a provisional application helps protect them better hence why it was and still is preferred.

  • The file for a provisional application is retained for a longer period

As already mentioned earlier, a Disclosure Document was destroyed by the USPTO after two years unless it was referred to in a separate letter in a related provisional or non-provisional application filed within those two years. On the other hand, while a non-provisional application must be filed within 12 months of the filing date of a provisional application for the inventor to claim the benefit of the provisional application as explained over at guttulus.com, the file for a provisional application is retained for longer, with the USPTO retaining it for at least 20 years, or longer if it is referenced in a patent or patent application publication. An abandoned provisional application is still retained for at least 5 years from its filing date.

  • Any benefits derived from a Disclosure Document can also be obtained from a provisional application

The provisional application is considered a constrictive reduction to practice of an invention as of the filing date accorded the application if it describes the invention in sufficient detail to enable a person of ordinary skill in the art to make and use the invention as outlined over at runrex.com. Therefore, the disclosure requirements for a provisional application are similar to those of a Disclosure Document, while a provisional document also provides users with a filing date without starting the patent term period. This means that any benefit derived from the filing of a disclosure document may also be obtained from the filing of a provisional application, and added to the extra benefits of a provisional application, you can see why it is superior.

  • Foreign patent rights

Many foreign countries have what is referred to as an “absolute novelty” requirement which means that public disclosure of an invention anywhere in the world before the filing date of a patent application will act as a bar to the granting of any patent directed to the invention disclosed. Therefore, since a Disclosure Document is not a patent application as mentioned earlier, it doesn’t help an inventor avoid the forfeiture of the US or foreign patent rights, something that filing a provisional application helps with.

These are just some of the reasons why you should file a Provisional Application for Patent over the Disclosure Document program, with more on this topic to be found over at runrex.com and guttulus.com.