‘By Reference’ Patent Applications, and Why They’re a Bad Idea

13 Jun ‘By Reference’ Patent Applications, and Why They’re a Bad Idea

When you file a patent application, one of the key pieces of paperwork that must be submitted is an application data sheet. This form contains basic information about the patent, such as the names and addresses of the inventors, the title of the invention, and the number of drawing sheets being filed.

A quick word: Patent filers often get confused by the application data sheet form’s mention of assignees, applicants, and inventors. Just to clarify:

  • Inventors are the people who contributed to the claims filed in the patent application.
  • The applicant is the person who actually files the patent application.
  • The assignee is the person or business entity that will own any patent derived from the patent application.

In many cases, all three are the same person, and it’s only necessary to fill out the information for the inventor, rather than stating the same information three times. But in cases where an inventor has been working on behalf of a corporation, in that scenario they will be a named inventor, but their employer is the assignee. Additionally, it can be wise to form a patent holding company and make that entity the assignee.

Now, with that out of the way, let’s talk about ‘by reference’ applications.

The purpose of ‘by reference’ filings, and why they’re a bad idea.

On the application data sheet, there’s a section to fill out if you wish to file a ‘by reference’ application. The idea behind filing by reference is this: You previously filed a provisional application, but forgot to file a proper non-provisional application. This morning you woke up in a cold sweat because you realized that your provisional application is going to expire in a couple of hours. To prevent catastrophe, you just want to take the existing provisional application and convert it to a non-provisional application.

You can fill out the ‘filing by reference’ section on an application data sheet form, and submit it along with a patent application which reads, “Application [insert application number of the original provisional application] is hereby incorporated in its entirety.” This will buy you two months to refile your provisional application as a non-provisional application.

Here’s the problem with this: Odds are that your provisional application won’t meet the standards for a non-provisional application. So, what you’ll have to do is make a preliminary amendment that replaces the ‘by reference’ application with the provisional application, and then a second amendment that replaces the provisional application with the fully fledged non-provisional application that you originally intended to file before the clock ran out.

This is bad because it adds a lot of steps to the process, and unnecessarily burns cash on filing fees. Frankly, ‘by reference’ applications aren’t terribly relevant to the United States, and are more useful in other countries. They’re a product of the Patent Law Treaty Act, which incorporated elements of international patent law into domestic patent policy.

What I would do for a client is: File the provisional application as a non-provisional application, and then file a second non-provisional application as a continuation-in-part of the non-provisional application. This is a simpler, faster, and less expensive process. The only reason you would bother with a ‘by reference’ application is, as in our hypothetical example, you completely dropped the ball. And a great way to avoid that problem is to hire a patent attorney to manage the process for you.

Hiring a patent attorney takes much of the responsibility out of your hands. In addition, your attorney can help you determine the most time- and cost-effective approach to successfully patenting your invention. If you would like to learn how the Law Office of Michael O’Brien can help you effectively navigate the patent process, call us at 916-760-8265, or send us a message using our contact form.