Provisional Patent Application and Tech-based Companies | A Tailored Solution?

Pedro Rebelo Tavares explains, in the context of tech-based companies, the provisional patent applications, their main advantages and what kind of care should be taken in filing a provisional patente application.

In recent years we have witnessed a great increase in the creation of small and medium-sized commercial enterprises whose object gravitates around a strong technological component.

In this context, there are many cases where it is crucial to protect the rights to innovative technologies, so that they can subsequently be developed, licensed or even sold to an eventual investor without the risk of them being reproduced or appropriated by competing companies.

Patent applications are often filed at this stage. However, the drawing up of such applications usually involves some time, as well as high costs which, at an early stage, may be prohibitive for the company concerned.

In addition, sometimes, when the future of a technology is still uncertain, there may be some fear in filing patent applications. The publication (and consequent disclosure) of a patent application allows third parties to become aware of the technology concerned. This can be a problem because, if the application is not granted, such technology, which could have been a lucrative business secret, falls into the public domain and becomes appropriable by third parties, namely competitors.

It is in the context of these adversities that provisional patent applications arise in Portugal.

1. After all, what is a provisional patent application?

In Portugal, a provisional patent application starts by being a quick and affordable way of guaranteeing a priority date for the protection of an invention by way of a patent without the need to initially fulfill all the requirements of a patent application. That is, many of the formal issues concerning the filing of a patent application are not required in the provisional application.

2. When should it be used?

The use of a provisional patent application is recommended in particular whenever the inventor has not yet had the opportunity to assess the economic potential and industrial application of his invention or to find the partners/investors appropriate for its economic valuation and cautiously intends to reduce initial investment.

3. What are the main advantages associated?

The provisional patent application allows the holder, for a symbolic cost, to guarantee the priority date of his invention. This priority, contrary to what happens in patent applications, is guaranteed in a confidential way, since the application is published only after its conversion into a definitive application. Should the provisional application never be converted into a definitive application, the invention will never be published and will remain secret.

In addition, after the filing of the provisional patent application, the holder will have a year to test the commercial viability of the invention and seek investors and/or partners for its manufacture, sale or distribution - a solution that can be vital and very attractive for small and medium-sized companies, as well as technology-based start-ups that are taking the first steps of their activity.

In addition to all the above advantages, the holder of the provisional patent application may also request a prior art search at the date of filing of the application, which will be of extreme relevance when deciding whether or not to convert the provisional application to a definitive patent application.

Thus, if the technology proves to be promising, the holder may, during that year, convert the provisional application into a definitive application. The priority of the definitive application is retroactive to the time of the filing of the provisional application, which means the holder has priority over any other inventors who, meanwhile, have achieved technically similar solutions and submitted patent applications.

4. Does the provisional application allow me to disclose the invention?

Yes. One of the requirements for an invention to be patentable is novelty, meaning the invention cannot be disclosed to the public prior to the filing of the application. This requirement often conflicts with concerns diametrically opposed to those referred to above, such as the academic pressure researchers whose career may depend on publication in scientific journals are subject to, or legitimate business promotion needs of companies, including demonstrations at international fairs.

In such situations, starting with a provisional patent application may also have an additional advantage over the definitive application, since it allows the patent holder to publicly disclose the results of its investigation, in particular in scientific articles or international fairs, without sacrificing its novelty, before making the financial commitment required for its definitive protection.

5. What kind of care should be taken in filing?

Although the formal requirements for filing a provisional patent application are relatively simple to comply with (a brief description of the invention, which may even consist in the adaptation of an academic work), it is not possible to add additional technical subject-matter.

Thus, when converting to a definitive application, all the technical subject-matter relevant to reproducing the invention must already be included in the description submitted with the original provisional patent application, otherwise the scope of protection of the patent will be limited or, in worst case scenarios, a new application must be filed - which implies a loss of priority and, where there have been public disclosures, failure to comply with the mandatory novelty requirement.

Given the above-mentioned danger, it is very important to obtain specialized counsel regarding the use and correct preparation of a provisional patent application in Portugal. However, when properly used, this tool represents a significant added value in the service of economic agents that bet on innovation.

Pedro Rebelo Tavares | Trainee Lawyer | pedro.tavares@pra.pt