While the United States is alternately lauded and slammed for its characteristic unilateralism, in at least one area — intellectual property (IP) policy — the US is no longer alone, as Israel has become the second country in the world to adopt a provisional patent application.
Provisional applications emerged for the first time in 1995, when the US Patent and Trademark Office (USPTO) first began accepting them as a cheaper, faster way of enabling inventors to reserve a spot for their inventions.
Unlike non-provisional patent applications — which require a full disclosure of the invention in words and pictures, along with a recitation of the claims of the invention, and which then undergo examination by the USPTO to determine if they warrant patent protection — provisionals function simply as a placeholder. They are not actually examined, and they do not require a listing of claims.
Instead, provisional applications require only a full and complete description of the invention, their filing cost is a fraction of a “full” non-provisional application, and they furnish inventors with 12 months in which to convert them into non-provisionals. The idea is to provide innovators with a year to experiment in the market with their invention and determine if it merits pursuing full patent protection. During that provisional year, inventors can label their product with the term “patent-pending,” while their application remains under seal at the USPTO.
Provisionals have proven especially popular with startups and solo inventors who are less able than large technology firms to invest in the full patent process but nevertheless wish to test the waters.
And yet, while the Patent Cooperation Treaty (PCT) offers
some similar placeholder benefits on a global basis, no country other than the
US has fully embraced the concept of a provisional patent — until last month.
In June, the Israel Patent Office (ILPO) joined its American counterpart by announcing
In order to empower applicants to advance their patent applications, the ILPO has proposed a new track that would allow the filing of temporary patent applications to reserve a filing date, similar to the provisional patent application available in the United States.
The ILPO initiated a public comment period in July, during which it is entertaining reactions from industry, academia, and government entities.
But the announcement drew plaudits from many in the local IP
community who believe the availability of provisional applications will spur
Israeli innovation, much as it does in the US.
Israel Advanced Technology Industries noted in a press release that “the IL provisional will provide most of the benefits of a US provisional,” and expressed hope that it would “expand the utilization of IP rights by Israelis and support innovation and economic growth.”
This sentiment was largely shared by practitioners. “The [existing] patent registration process seems inaccessible to many,” my friend Asa Kling, the former director of the ILPO, told the Israeli business newspaper Calcalist, “and this could make it an option for a greater portion of the population.” Indeed, Kling argued, “Many [Israeli] entrepreneurs are hesitant to apply for a patent at an early stage as it is a complex and expensive process.”
Barring unforeseen obstacles, the Israeli provisional application could take effect before the end of the summer, which raises the obvious question: What country will be the next to join Israel and the US in the ranks of provisional-friendly states?