Protecting Innovation: Provisional Applications & Apple’s Cautionary Tale

Almost everyone remembers when Steve Jobs took the stage to introduce the original iPhone to the world. Yet few people realize that during that iconic presentation, Steve Jobs also made a costly mistake.

As part of his demonstration of iPhone features, he included a very quick display of a not-yet-perfected effect that became known as “rubber-banding.” This feature – now prevalent in many mobile technologies – had not yet been patented nor had a patent application been filed. And, in showing it to the world before it was protected, some of the patents that were later issued were ultimately found to be invalid.

A provisional patent application filed early in the stage of development may have saved Apple millions.

What is a Provisional Application?

Most entrepreneurs realize that they should take steps to protect their innovation with a patent, but few fully understand the patenting process, particularly the concept of provisional applications.

For most entrepreneurs, the best first step in the patenting process is to prepare and file a provisional application with the U.S. Patent & Trademark Office (USPTO).  A provisional application differs from a “regular” application (i.e. a utility application) in that it only exists for one year.

At the end of the year the provisional application will lapse unless a utility application is filed.  In addition, a provisional application does not have any formal requirements, as do utility applications, and is not examined by an Examiner.  This is why a provisional application can be viewed as a one-year place-holder.

Importantly, because provisional applications serve as place-holders, they are kept secret by the USPTO, are not published, and are not viewed by an Examiner. Only utility applications are sent to Examiners to be examined.

Although provisional applications only last one year and, on their own, never can result in the issuance of a patent, they serve many benefits. If a utility application is filed before the end of that year, the utility application can refer to the provisional application’s filing date. In other words, the utility application largely gets the benefit of the provisional application’s earlier filing date.

Consequently, many inventors describe the invention in as much detail as possible in the provisional application, then continue to work on modifying, improving, and perfecting the invention during the provisional year.  Sometimes additional provisional applications are filed during that year if the modification/improvement is particularly important because a utility application can refer to more than one provisional application.  All of the modifications and improvements are then included in the description when the utility application is filed on or before the one year anniversary.

Leveraging Provisional Applications

The provisional application serves several very important functions.  One of the most important is to give the inventor a definite filing date, referred to as a priority date, for submission of a description of the invention to the USPTO.  This is particularly important because the United States now awards patents to the first inventor to file a patent application.  In the past, when the United States awarded patents on a “first to invent” basis, as long as an inventor could prove that s/he invented the invention before another patent applicant, obtaining an earlier priority date was not as important.  But now it is critical to file an application as soon as the invention can be adequately described to ensure a first place in line should others have similar inventions.

The priority date also determines what information the USPTO can use to reject a utility application. For virtually all of the world, any public disclosure occurring before an application’s priority date can be used to impede the application from maturing into a patent.  While the US recognizes a few exceptions, those exceptions tend to be narrow and are not recognized by other countries. Consequently, most inventors will file a provisional application as soon as they are able to do so in order to limit an Examiner’s ability to reject the application based on some available public disclosure.

Filing a provisional application is also far less expensive than filing a utility application.  The USPTO fee for filing a provisional application is minimal: $130 for companies with less than 500 employees and affiliates as compared to $800 for filing a utility application.  In addition, once a provisional application is filed, the inventor can immediately begin referring to the invention as “patent pending,” which oftentimes helps obtain funding and also discourages others from trying to wrongfully capitalize on the invention.

Another advantage that a provisional application provides is to reduce the entrepreneur’s worry when talking with investors, hiring consultants or manufacturers and colleagues.  While a non-disclosure agreement (NDA) is still a good idea, if someone does inadvertently make a public statement about the invention – like what Steve Jobs did with the iPhone – there is less danger that a patent directed to that invention would be affected because an application has already been filed.

Jobs’ disclosure of “rubber-banding” – the scrolling effect that occurs when you reach the top or bottom of a photo or list of photos, for example, and causes the screen to “bounce back” to re-center the first or last photo – was very, very subtle. It can be seen in the video of Steve Jobs introducing the iPhone that posted on YouTube in January 2007 (see about the 33:40 mark of just after showing how to move a photo around on the screen).

Unfortunately, Apple had not yet filed a patent application that described the rubber-band technology, although it had filed some provisional applications directed to other aspects of the iPhone technology.  Five months later Apple filed some more provisional applications and then in August 2007 filed utility applications in the US and internationally, which eventually granted as patents.  But during an infringement lawsuit with Google and Samsung in Germany, Google brought the 2007 YouTube video to the attention of the German court.  Despite the very quick and subtle rubber-band effect displayed in the video, Apple’s European rubber-band patent was invalidated because of the YouTube video’s public disclosure.

Obviously, Apple made a significant error.  Perhaps Apple needed the additional five months to perfect the technology for the June 29, 2007 iPhone launch; that perfected technology was included in the utility application Apple filed.  But perhaps Apple could have avoided losing its European patent if they had filed a provisional application describing the less-than-perfect technology before the January event so that the YouTube video could not have been used to invalidate the patent.  A sad story for Apple, but a powerful example of how a provisional application can provide some protection against unforeseen events.