What is a temporary provisional patent? Is there such a thing as registering a temporary provisional patent? Why do people mistakenly think that the incorrect term “temporary provisional patent registration” is a patent, and what is the difference between patent registration and a provisional application, mistakenly called a temporary provisional patent?
Temporary provisional patent registration or, by its correct name, a PROVISIONAL application, does not confer patent rights. First of all, patent rights mean preventing another user who is not the patent holder, and who is not authorized, from exploiting the invention for 20 years from the date of filing the patent registration application.
“Temporary Provisional Patent Registration” is an Incorrect but Common Term
The incorrect term “temporary provisional patent registration” has taken root in Israel in slang, and the provisional application, which does not exist at all in the proceedings of the Israel Patent Office, is better known by these various incorrect names, such as “provisional patent” or “temporary patent”.
As of 6.3.2015, searching Google for the Hebrew words for “provisional patent” returned 918 results, searching for “temporary patent” returned 55,600 results, and searching for the word PROVISIONAL returned 61,300,300 results.
Rights of a Temporary Provisional Patent, i.e. a Provisional Application
The provisional application grants the applicant a priority date for one year in 175 countries in accordance with the Paris Convention. In other words, an applicant who files a provisional application is entitled to file a patent in any of the countries that are signatories to the Paris Convention, if 12 months have not yet passed since the provisional filing date.
If the applicant files a patent application, as mentioned, in one or more of the Convention countries, and attaches the priority documents through which he claims priority in the patent application, the date of the provisional application will be considered the date of the later patent application.
In other words, John files a provisional application; a competitor, Jane, files a patent application after John; John files his patent application before a year has passed since filing the provisional. This means that John won the application date, even though Jane filed a patent before him, provided that the provisional application and John’s later patent application concern the same invention.
In other words, by means of a provisional application, an inventor can seemingly talk about his invention, and if Jane, as a result of the presentation of the invention, files a patent and tries to seize the patent right, John will exercise his right by virtue of the provisional application by preserving the priority date.
Temporary Provisional Patent and Use of the PCT
With a provisional application, which grants a priority date for one year (12 months), it is possible to extend the period for filing patent applications in specific countries by means of an international filing under the PCT. In other words, it is possible to extend the period in which specific applications can be filed in the countries that are signatories to the treaty by an additional year and a half.
Through a strategy of postponing the date for filing patent applications individually in each country, by making informed use of the treaties, it is possible to postpone the expenses of patent registration applications in the target countries by about two and a half years, 30 months in most countries and 31 months in some, with some exceptions.
This strategy of postponing patent filings is not always right for the inventor or the venture, and the right strategy should be examined for each case and tailored to the inventor or the company, to the business goals and to a range of different parameters.
Advantages and Disadvantages of a Temporary Provisional Patent Application
The provisional application has several advantages, for example, a relatively low cost, a short time to file, and it confers a right in 175 countries. However, alongside these advantages there are also disadvantages. Applicants, and sometimes even patent attorneys, write the application too narrowly. The low cost and the fast turnaround that various patent attorneys sometimes promise can lead to technological and legal gaps in the application.
In other words, patent attorneys and attorneys, sometimes in light of the low budget compared to a patent and in light of the short time in which they undertake to file the application, do not delve into the technical aspects, and produce general drawings that do not express all of the various components of the invention, and as a result the description is also short and incomplete.
Later, the inventor wishes to file a patent application before a year has passed, and the various patent authorities sometimes do not accept material details as entitled to the priority date of the provisional application. This means that the inventor will not receive the first date of the provisional application, and the material additions that were filed only in the patent application will be recognized with a later date.
It is therefore recommended not to be tempted by promises of fast filings that are not backed by thought, technical solutions and legal drafting that considers the scope and definition of the invention, both legally and technically.
It is worth investing thought and time in how to properly protect the invention, because missing details and saving time can sometimes cost the applicant dearly, as he may lose significant parts of his invention and of his future income.
Patent Registration in Israel
Patent registration in Israel is conducted before the Israel Patent Office. A patent registration application can be filed in Israel as a first application, i.e. without first filing a provisional application with a patent office (provisional “patent” registration) or an international application under the PCT, but rather filing a patent application in Israel and within one year filing applications outside of Israel with an Israeli priority date.
The application in Israel is examined by a patent examiner at the Israel Patent Office. The examiner will usually issue an examination report that must be answered. The advantage is that a patent application is examined, as opposed to an application filed with a patent office as a provisional “patent”, which is not examined.
Patent Registration Fees in Israel
The cost of a patent fee in Israel varies depending on several factors, and the fee changes from case to case. Broadly speaking, there are two main options: one is an application without a priority date, and the other is an application with a priority date. Another matter is the characteristics of the applicant.
In other words, the fee will vary according to whether the application claims a priority date, and according to the identity and characteristics of the applicant, for example a private individual or a company, and if it is a company, the company’s sales turnover.
A New Patent Registration Application in Israel
claiming a priority date from a previous application, for example if a provisional application was previously filed with a patent office, or a patent application in another country, and the application in Israel claims priority from the previous application, i.e. the application in Israel is not the first one filed for this invention. The fee in this case, as of 7.2.2021, is NIS 2,030.
A New Patent Registration Application in Israel
that does not claim priority from a previous application, i.e. it is the first application filed for this invention in the world. The fee in this case, as of 7.2.2021, is NIS 1,218, i.e. a reduced new patent application fee (a 40% discount) for those entitled to it.
A New Patent Registration Application in Israel for a Company
may be different. If the company’s sales turnover was over NIS 10 million, the fee will be NIS 2,030, even if, for example, it first filed a patent registration application in Israel. In other words, since the company’s turnover was over NIS 10 million, the company is not entitled to a fee reduction. However, if the company’s sales turnover was less than NIS 10 million, the company is entitled to submit an affidavit to that effect, duly signed before an attorney, stating that its sales turnover is less than NIS 10 million, and the company is then also entitled to a discount on the filing fee if it is a first patent application in Israel for the same invention.
Additional Reduced Fees in the Patent Registration Process
Payment of reduced fees accompanies the patent application later on as well, both in Israel and outside of Israel. It is important to pay the correct fee. Failure to pay the correct fee, for example in the USA, where the fee does not match the applicant’s characteristics, may result in the patent being granted unlawfully, and when the patent holder seeks to sue for infringement of the patent, the defendant will argue that the fees paid were not lawful and the patent is not valid at all. It is therefore important to consult a patent lawyer or patent attorney who is familiar with the subject.
For example, in Israel, if the patent application is approved, the Patent Office issues a notice before acceptance. The reduced application acceptance fee (a 40% discount) for those entitled to it is, as of 7.2.2021, NIS 427, compared to the patent acceptance fee without a reduction, the application acceptance fee under Regulation 52, which is NIS 711.
In other words, if a fee is paid that does not match the proceeding or the applicant’s characteristics, a person may have received a patent, but when the day comes and he sues for infringement, the defendant will argue that the patent was granted unlawfully and is invalid in light of the incorrect payment of fees.
Patent Registration and Extension to Additional Intellectual Property Protections
Sometimes, in addition to patent registration or without patent registration, it is possible to file for or use additional intellectual property rights. Patent registration is one intellectual property right under the Patents Law, but applicants are sometimes unaware that they can expand the scope of protection by means of other intellectual property laws that are not patents at all.
Below are several examples of additional proceedings that our firm handles in order to maximize the scope of intellectual property protection.
Design Registration at the Patent Office’s Designs Department
This is important in addition to the technological invention, or sometimes only when there is a design, the design is new and it is important to protect it. Designs are relatively easier to protect compared to a patent, and sometimes there is an advantage in infringement claims, as it is easier to prove design infringement in court than patent infringement.
Trademark Registration at the Patent Office’s Trademarks Department
It is possible to protect a name, a logo or a combination of them. Preventing a competitor from using the name of a service or product can sometimes be critical to success. A competitor who uses the goodwill of the registered owner may pay heavy compensation. In this way, by registering a trademark, it is possible to prevent competitors from harming the goodwill and to avoid the resulting economic damages.
Utility Model Registration Outside of Israel
This proceeding has not been opened in Israel, but in many countries it is possible to file a proceeding similar to a patent that is based on text and not on design. The examination, if there is one in that country, is relatively easy; it mainly concerns novelty, and the requirement of inventive step that exists in a patent application is not required in most places. A great advantage is that the response is usually very short relative to a patent, and a certificate will be granted faster. A disadvantage is that the scope of protection is narrower, and only when there is an alleged infringement will the intellectual property right be examined as part of the infringement claim.
Copyright concerns, for example, an image or a text, such as software or a book, and many other cases in which copyright can be protected. A huge advantage is that the protection period is long and can reach up to 70 years from the death of the author. In certain cases, for example in Israel, there is no registration requirement, but rather fixation, for example by publication or an affidavit. In the USA, an application is filed with the Library of Congress.
How Do You Begin Registering a Patent or Other Intellectual Property?
It is important to consult a patent lawyer or a patent attorney in appropriate cases in order to maximize the scope of protection and not to do the wrong things that will harm the scope of protection. Our firm has a team of attorneys and patent attorneys, as well as a network of associates in dozens of countries, who deal with the rights registration process every day. Call us, we do not charge for an introductory call and we will help you move forward.
The information on the website is partial and incomplete. Please consult an attorney or patent attorney for each specific case. Contact us for details.
For more details, support for your invention and building an intellectual property strategy, call +972-3-9711013.