Insight: Why file a provisional patent application?

Jeffrey Proehl
for the Sioux Falls Business Journal
Jeffrey Proehl

Jeffrey Proehl is a registered patent attorney with Woods, Fuller, Shultz & Smith P.C. in Sioux Falls.

Inventors often have questions about the difference between filing a “provisional” and a “non-provisional” patent application to protect an invention.

Primarily, the applicable rules for filing a provisional application are less stringent than for a non-provisional application. Although the formal requirements for a provisional application are lower, the legal requirement to provide a complete and accurate disclosure of the invention still applies to a provisional.

One advantage of filing a provisional application may be the establishment of a filing date and “patent pending” status for an invention without having to comply with all of the formal requirements of a non-provisional application. This may be beneficial if the invention is still being developed and may change significantly or if the inventor is undecided whether to pursue a patent through the entire process.

However, while filing a provisional application is a step toward obtaining a patent, this step alone will not result in a patent being issued since a provisional application is never examined to determine if the invention is patentable.

A provisional application expires a year after it is filed and a non-provisional application must be filed before the provisional application expires in order to pursue a patent on the invention. Only non-provisional applications are examined by the U.S. Patent and Trademark Office (U.S.P.T.O.) to determine if the invention is patentable.

The U.S. Patent and Trademark Office issued the following patents to South Dakota inventors in April 2017:

Patent No. 9,611,618

Title: Dual Action Grapple Apparatus

Inventors: Timothy D. Miller, Sioux Falls

Assigned: Not Reported.

Summary: Miller has developed a grapple apparatus that closes and opens in two stages for greater gripping ability.

Patent No. 9,631,198

Title: Chimeric Promoters Capable of Mediating Gene Expression in Plants Upon Pathogen Infection and Uses Thereof

Inventors: Christoph Kirsch, Cologne, Germany; Elke Logemann, Pulheim-Dansweiler, Germany; Klaus Hahlbrock, Freiburg, Germany; Paul Rushton, Brookings; Imre Smossich, Cologne, Germany

Assigned: Max-Planck-Gesellschaftzur Foerderung der Wissenschaften e.V., Berlin, Germany

Summary: The inventors have developed compositions for combating diseases in plants.

Patent No. 9,630,449

Title: Wheel Installation Crane for Combines

Inventors: Timothy S. Thomas, Bowdle

Assigned: Not Reported.

Summary: Thomas has developed a wheel removal lift that is mountable on the combine from which the wheel is being removed.

Patent No. 9,615,704

Title: Cleaning Apparatus for an Air Handling Unit

Inventors: Kevin K. Becker, Yankton

Assigned: Not Reported.

Summary: Becker has developed an apparatus for removing and supporting a wall-mounted heating and cooling unit while it is being cleaned.

Patent No. 9,630,156

Title: Fluid Holding Structure Fluid Circulating System

Inventors: John Ries, Elk Point

Assigned: Not Reported.

Summary: Ries has developed an apparatus for positioning influid in a tank to circulate the fluid in an upward direction.

Patent No. 9,629,985

Title: Drug Delivery Balloon Apparatus and Methods for Use

Inventors: Patrick W. Kelly, Sioux Falls

Assigned: Sanford Health, Sioux Falls

Summary: Kelly has developed a medical device able to block a vessel in a patient’s body and deliver a drug into the blocked vessel.

Patent No. 9,629,738

Title: Guide Wire with Multi-Lumen Access Threads

Inventors: Patrick W. Kelly, Sioux Falls

Assigned: Sanford Health, Sioux Falls

Summary: Kelly has developed a medical device with multiple guide wires capable of extending through multiple vessels of a patient’s body.

Patent No. 9,628,502

Title: Active Attack Detection System

Inventors: David Clark, Coppell, TX; John Strand, Sturgis; Jonathan Thyer, Greensboro, NC

Assigned: Meadow Hills, LLC, Coppell, TX

Summary: The inventors have developed a system for determining the security of a wireless network prior to joining the wireless network.

Patent No. 9,627,924

Title: IntelligentHigh Speed Automatic Transfer Switch

Inventors: Kip McArthur Larson, Rapid City

Assigned: Littelfuse, Inc., Chicago, IL

Summary: Larson has developed an improved switch for transferring between power sources when power from a primary source is interrupted.

Patent No. 9,623,103

Title: Arterivirus Protein and Expression Mechanisms

Inventors: Ying Fang, Pierre; Eric John Snijder, Leiden, Netherlands; Andrew E. Firth, Cambridgeshire, Great Britain; John F. Atkins, Cork, Ireland; Emma Elisabeth Treffers, Leiden, Netherlands; Ali Tas, Leiden, Netherlands; Yanhua Li, Pierre

Assigned: South Dakota Board of Regents, Pierre; Cambridge Enterprise Limited, Cambridgeshire, Great Britain; Academisch Ziekenhuis Leiden, Leiden, Netherlands; University College Cork, Cork, Ireland

Summary: The inventors have developed vaccines that combat the PRRS virus in pigs.

Patent No. 9,622,969

Title: Polymer Conjugated Protein Micelles

Inventors: Omathanu P. Perumal, Brookings; Satheesh K. Podaralla, Greve Coeur, MO;Ranjith Kumar Averineni, Portage, MI

Assigned: Not Reported.

Summary: The inventors have developed improved compounds for delivering a drugin a patient’s body.

Patent No. 9,618,898

Title: Toner Cartridge

Inventors: Richard L. Swantner, Rapid City; Robin P. Yergenson, Eagle, ID; Dean J. Richtsmeier, Boise, ID

 

Assigned: Hewlett-Packard Development Company, L.P., Houston, TX

Summary: The inventors have developed a toner cartridge design that facilitates the incremental purchasing of toner contained in the cartridge.

No. 9,616,021

Title: Method of Forming Non-Immunogenic Hydrophobic Protein Nanoparticles, and Uses Therefor

Inventors: Omathanu P. Perumal, Brookings; Satheesh K. Podaralla, CreveConeur, MO; Radhey S. Kaushik, Brookings

Assigned: Not Reported.

Summary: The inventors have developed methods for forming nanometer-sized particles for medical uses.

Patent No. 9,615,956

Title: Orthopedic Clavicle Brace

Inventors: Jack T. Sears, Spearfish

Assigned: Not Reported.

Summary: Sears has developed a brace for the upper torso that is adjustable from the front of the patient’s body.

Patent No. 9,612,004

Title: Display Module Mounting

Inventors: RyanHemiller, Brookings; Ryan J. Nielsen, Brookings; Shannon Lee Mutschelknaus, Aurora

Assigned: Daktronics, Inc., Brookings

Summary: The inventors have developed a latching system for securing a display module in a support frame of a large display structure.

Patent No. 9,629,315

Title: Plants and Seeds of Corn Variety CV044513

Inventors: Peter Guzman, Sioux Falls; Clinton J. Turnbull, Thayer, NE

Assigned: Monsanto Technology LLC, St. Louis, MO

Summary: The inventors have developed a new corn variety.

Patent No. 9,622,440

Title: Plants and Seeds of Hybrid Corn Variety CH003028

Inventors: Scott A. Bergemann, Northfield, MN; Fufa H. Birru, Willmar, MN; L. John Frederickson, Mason, MI; Peter Guzman, Sioux Falls; Richard G. Stelpflug, Cottage Grove, WI

Assigned: Monsanto Technology LLC, St. Louis, MO

: The inventors have developed a new corn variety.Summary