Good, Bad & Ugly: Truth About Provisional Patent Applications

As patent reform moves forward with the first to file provisions still intact we can expect to hear from many corners that the thing that inventors and businesses need to do is file provisional patent applications.  I am a big fan of provisional patent applications, and they can be a very useful tool, but only when they are done right.  When a provisional patent application is done poorly you not only don’t get any benefit, the filing potentially demonstrates that as of that moment you were not in possession of an invention.  Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention has not ripened past the idea stage at the critical moment the invention was memorialized at the filing date.  Therefore, it is critically important to understand what is required in a provisional patent application and not to fall prey to those who knowingly or unknowingly prey on unsophisticated inventors.

First, let me point out that there are some operating on the Internet who are peddling provisional patent courses and/or various methods for drafting provisional patent applications.  Inventors and businesses need to be very wary.  Not because all of those courses and methods are bad, but because there are at least some that have been put together by inventors who think a few patent applications make them experts on drafting patent applications.  Listening to one who is not a patent attorney or patent agent about what needs to go into a patent application is a little like needing brain surgery and instead of seeking a brain surgeon asking a psychiatrist to perform the surgery since they are familiar (at least to some extent) with how the brain behaves.  The first rule of brain surgery is that you need a brain surgeon.  Similarly, the first rule of drafting a patent application is that you need the help of a patent attorney or patent agent.

[Invent-Patent]

Recently some of my articles have generated conversations about what needs to go into a patent application in order to have it be deemed complete.  In fact, over the last several days we have had some interesting discussions about patent illustrations and whether they are absolutely required in all cases.  For those not thoroughly marinated in patent law the best rule of thumb is that drawings are ALWAYS required.  This is an overstatement, but not by much.  Yes, there are exceptions, but 35 U.S.C. 113 says drawings are required if necessary to understand the invention.  In my experience the only inventions that are not better understood with drawings are chemical compounds, because the formula tells the whole story.  It is true, however, that MPEP 601.01(f) says that for the purpose of awarding a filing date a patent application that claims a method does not need a drawing.  I would greatly prefer that newbies read that as the United States Patent and Trademark Office being extremely lenient, extraordinarily lenient even, in their interpretation of 35 U.S.C. 113.  The reality is that even a method can be depicted in patent illustrations, and really should be.  A picture is worth at least a thousand words in a patent application.  For more on this see: Tricks & Tips for Describing An Invention in  Patent Application.

What really prompted this article is the fact that there seems to be a popular misconception, and a misconception by some supposed experts who are offering provisional patent courses and methods.  The fanciful tale being told is that drawings are not necessary in a provisional patent application.  Allow me to be as straight forward and unambiguous as possible.  If drawings are necessary to understand the invention they are absolutely, 100% necessary in a provisional patent application.  The relevant statute that defines this requirement is 35 U.S.C 111(b), which says:

(b) PROVISIONAL APPLICATION.-

(1) AUTHORIZATION.-A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include-

(A) a specification as prescribed by the first paragraph of section 112 of this title; and

(B) a drawing as prescribed by section 113 of this title.

So those that claim you can or even should file a provisional patent application without drawings are simply inaccurate.  Follow such advice at your own peril.

Drafting a patent application is not an easy task (see Patents: A Most Difficult Legal Instrument to Draft) and those that take advice on patent law or drafting patent applications from those who are not patent attorneys or patent agents typically get bad advice.  Sometimes that advice is even outright harmful.  I have even heard non-attorney services give advice that if followed would result in the immediate forfeiture of rights.  While some might not object to the forfeiture of rights in certain circumstances, shouldn’t that be up to you the inventor to decide?  If you go to someone for help it seems just flat unacceptable that they would give you advice that would compromise your rights unbeknownst to you.  Yet, that is what happens when individuals fool themselves into believing attorneys are unnecessary and the services they provide are no better than the advice you receive from your average Joe.  Seriously, if that were the case wouldn’t the money-hungry mega-corporations just employ the man on the street rather than paying between $500 to $1,000 an hour?

There is a terrible injustice done by those non-attorney and/or non-agent services, and it amazes me that individuals are so ready to believe inventors and scientists who have a handful of patents and haven’t read many (if any) cases.  In the industry a law firm wouldn’t allow patent attorney to represent a client solo without having approximately 25 patent applications under their belt.  There is a reason for that.  So if you want to rely on the advice of an inventor who has a few patents or a research scientist with a handful of patents you really need to ask yourself one question —- why?  You go to an experiences accountant for tax issues, when you feel sick you go to an experienced doctor, if your car breaks down you want an experienced mechanic, yet when you have an innovation that you dream could be worth many thousands, or millions, of dollars you go to an inventor who has little or no experience drafting a patent application?  At which point exactly does that start to sound like a good idea?  After your third martini at lunch?

Non-attorneys and non-agents just don’t understand the law.  Whether they are being malicious or are just not well enough versed to know that what they are saying is nonsense is really of no importance as far as you the inventor is concerned.  You see, the damage that will be done is the same regardless of benevolence.  Follow bad advice and you suffer the consequences just the same whether bad advice was handed out maliciously, intentionally or as the result of a lack of understanding.

Now don’t get me wrong, provisional patent applications ought not to be feared as they are in some circles.  Having said this, however, you absolutely need to know that the description of the invention needs to satisfy the disclosure requirements of 35 U.S.C. 112 first paragraph as of the date it is filed.  In fact, in order for any patent application to be a useful priority document it must satisfy the requirements of 112 first paragraph, and pursuant to 35 U.S.C. 111 (see above) you need a drawing if required to understand the invention.

[Inventors-Google]

The historical trouble with provisional patent applications deals with the fact that the Patent Office does not examine provisional patent applications and all that is required is something attached to a provisional patent coversheet.  In other words, if you attach a provisional patent application coversheet to one or more pages and submit the appropriate fee you now have a patent pending and you will receive an official filing receipt from the Patent Office.  This means that provisional patent application quality varies widely from good, bad to outright ugly applications that do real damage. The fact that they are not reviewed by the Patent Office means there are seemingly no consequences for a deficient provisional patent application.

Whether that provisional patent application can ever be useful moving forward is unknown and unknowable at the time it is filed, which allows for those who knowingly or unknowingly peddle bad services or bad advice to largely hide behind the unknown.  In fact, you won’t know whether the provisional patent application was worthwhile in terms of disclosure until you later need to rely on the disclosure to establish your priority filing date.  If your disclosure was not complete you have nothing useful, and potentially may have compromised all right to obtain a patent.   The way you compromise your right to obtain a patent is by believing your provisional filing was adequate to stop the statutory bars of 102(b) from running and then realizing later that the provisional patent application was insufficient to define the invention.  So for goodness sake be careful.

I use provisional patent applications all the time.  The majority of those who I work with are inventors of computer implemented inventions (i.e., software, Internet processes and the like).  In most cases there is an invention worth protecting earlier than you might expect, but build out of the software/process has not yet begun or is just starting.  In any invention you will learn more about the invention during the build out or prototype phase, but before you engage in that phase you almost certainly have the ability to describe an invention to satisfy 35 U.S.C. 112.  So we file the best provisional patent application we can knowing that more will be learned.  We then add whatever is learned together with the originally filed provisional patent application at the time we file a nonprovisional patent application.  So an important use of provisional patent applications is for defining an invention that might not be complete, but which is concrete enough to be an invention.  This strategy can be useful regardless of the type of invention, and words just fine with inventions commonly made in your garage as well as software or even sophisticated basic science.  In fact, this is a strategy employed by some universities.  It should be employed by everyone who is proceeding to create an invention.  Lock in your priority date as early as possible relative to whatever you can describe.  A provisional patent application that satisfies 35 U.S.C. 112 is better than any invention notebook.

So the caution here is not to be scared away from provisional patent applications, but rather to understand there is more to them than meets the eye.  Yes, I have created my own provisional patent application creating system called the Invent + Patent System, and inventors use it all the time.  I also use it with my clients as a means to capture detailed information prior to a patent search.  The system works to create a great disclosure, and if you want to use it you can have me or another patent attorney review the output to give you feedback and guidance regarding what else needs to be present.  Of course, if you can hire a patent attorney or patent agent to prepare and create your patent application that is the best solution, but if you are looking for low cost alternatives because it is either spend less or forgo the project just make sure you are getting your money’s worth and not paying for bad advice that will irreparably compromise your rights.