It’s serial strategy on self-driving cart led to faster approval. 

Recently I came across U.S. Patent Application No. 20160260161, owned by Wal-Mart Stores, Inc., which relates to a self-driving shopping cart. The patent application covers an innovative system that will utilize a series of docking stations, sensors, motors and cameras to offer consumers the ability to “hail” a shopping cart using an app on their smartphones, as they would a taxi or Uber. Upon completion of use, the system will somehow be able to recognize abandoned carts within the store or in the parking lot so that they will be manually returned to a docking station for use by another consumer.

This patent application was filed by Wal-Mart on March 4, 2016, and published six months later. At first, that seems rather quick; patent applications typically publish 18 months after they have been filed. However, publication rules say that patent applications publish 18 months after the earliest priority date, which is not always 18 months from the filing of the non-provisional patent application. In this case, WalMart filed a provisional patent application on March 6, 2015, which meant that in order to claim priority from that provisional filing it had to file a nonprovisional patent application on or before March 6, 2016—which it did.

The first section of the specification (i.e., the written part of a patent application that is not the patent claims section) is almost universally the discussion of related patent applications, if any. This is the section of the specification in which earlier filed patent applications that provide priority for the present application are listed. This particular Wal-Mart patent application includes an exceptionally long list of prior filed applications that will each be used to provide priority. All of the previously filed patent applications in this chain are earlier-filed provisional patent applications.

Wal-Mart claimed priority to each of 37 separate provisional patent applications!

Leveraging First-to-File
I have suggested this serial provisional patent application strategy for many years, although this Wal-Mart patent application takes that to the extreme. Still, this application is instructive. Now that the United States has become a first-to-file country, filing serial provisional patent applications is essential. Of course, most will never file this number of provisional patent applications. Seeing the number of provisional filings does, however, indicate how important this invention is to Wal-Mart.

With any invention, there will always be a stream of conceptions and reductions to practice. The best practice is to file as soon as you have an invention that is susceptible to adequate description through words and drawings. File first. File often—even if that means filing serial provisional patent applications before filing a non-provisional patent application that wraps everything together. You can always claim priority going back to more than one provisional patent application, as long as they were filed within 12 months of the filing of the non-provisional patent application. That’s what Wal-Mart did.

Kate Gaudry and Tom Franklin, attorneys at Kilpatrick Townsend, recently explained in an article that the first-to-file rules should have led to more provisional patent applications being filed. However, their data analysis shows that more provisional patent applications are not being filed, which is rather shocking. It is worth noting that Kilpatrick Townsend is a venerable, large law firm that for the most part caters to large clients or well-funded startups. Gaudry and Franklin explain that they recommend and use serial provisionals with their clients.

Some patent attorneys hate provisional patent applications and tell clients that they should never use them. These attorneys incorrectly say that if you can file a provisional patent application, you can and should just file a nonprovisional patent application. But ask yourself: If serial provisional patent applications seems like a good strategy for Wal-Mart—one of the world’s largest corporations—and if they are recommended by the likes of Gaudry and Franklin at a well-respected law firm such as Kilpatrick Townsend, why wouldn’t serial provisional patent applications be an appropriate strategy for independent inventors, small businesses and luis start-ups working with a shoestring budget?

File as you Work
The best use of a provisional patent application is to establish priority rights as soon as you have an invention that can be patented. In a first-to-file world, you want to have a filing date as soon after your conception of the invention as possible. But in many, if not most circumstances, inventors continue to work with the invention, improve what they’ve invented or work on additional versions of the invention.

If you are going to continue working on the invention, a provisional patent application is a great idea. File the provisional application as reasonably soon as you can, making sure you describe what you have with as much detail as possible. Then as you continue working on the invention, as you make more advances, you may want to file another provisional patent application, and so on. By using serial provisional patent applications, you get priority for your invention as close in time to conception of various aspects of your invention as possible, which is extremely important the way the patent system is set up today.

Whether or not you like Wal-Mart, whether you think it is a good corporate citizen, or whether you want the store in your neighborhood, it is impossible to argue with the extraordinary success the company enjoys. If serial provisional patent applications seem like a good idea for it, they should seem like a good idea for you.