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The Benefits of a Provisional Patent Application

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Sep 14, 2013 @ 11:15 am
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There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.”  The first thing that needs to be said is that there is no such thing as a “provisional patent.”  Instead, what you file is called a provisional patent application.  Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.”

Perhaps most importantly, now that the United States has become a first to file country and abandoned our historic first to invent ways (see A Brave New World — First to File Becomes Law) it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.

Of course, a provisional patent application must be understood as nothing more than the first step toward receiving a patent.  Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States.  Still, there are substantial benefits to beginning with a provisional patent application. As with most things in life, however, there are pitfalls that can and do trap the unwary and unknowledgeable.

Why provisional patent applications a good idea

One reason I like to suggest starting with a provisional patent application as a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a small entity. See USPTO Implements Micro Entity Discount. Regardless of the filing fee to be paid to the USPTO, provisional patent applications cost less to prepare from an attorney fee perspective because there are no formal requirements, which means we can focus on disclosing the invention in its full detail while still preparing an exceptionally detailed application that costs only a fraction of the cost of a nonprovisional patent application (i.e., regular patent application).

Many patent attorneys and patent agents will question whether you can really prepare a provisional patent application while spending less time than preparing a nonprovisional patent application.  I am here to tell you that it is not only possible but I do it all the time and so do other attorneys at my firm and many other attorneys that I know at other firms.  Describe whatever you can, file a provisional patent application and work toward perfecting the invention and seeing if there is a market.  That is how provisional patent applications are best and why they are a valuable tool for those with a limited budget, which at the end of the day is everyone in the patent space.  No one has enough money to protect everything they invent, not even mega-giant tech companies. So you take responsible steps forward to secure rights once you reach the point where you have something patentable.

With most provisional patent applications the 75-25 rule applies.  To get to 75% complete it takes 25% of the time and the final 20% will take 80% of the time.  Thus, the approach to provisional patent applications is to make sure you have all the disclosure we need later when we will prepare the nonprovisional patent application.  This can include attaching one or more supplemental documents to a drafted provisional patent application, it can and usually does include filing many drawings, sketches and even photographs.

Assuming you have filed an appropriate provisional patent application you can market the invention without fear of losing patent rights, generating cash to proceed with development or further patent activities.  In other words, the provisional patent application is an interim step along the road to a patent.

 

When is a provisional patent application best?

In many, if not most or even nearly all, situations the invention as you initially conceive of it will not be the invention that you ultimately want to patent. Many times you will come up with an invention and want to protect it but you know you will need to continue working on it.  There are things you want to make better, things you need more time to research and develop and in many cases you are seeking to obtain patent pending status before you have 3D renderings, engineering drawings or even an intermediate prototype.   In this context you simply cannot possibly describe everything you will ultimately want to describe because you don’t have the invention complete in its full glory.  This is why the 75-25 rule almost always applies to drafting of provisional patent applications.

As you progress forward with your invention you learn more each step of the way.  It is best to file a patent application as soon as possible, so consider filing a provisional patent application as soon as your invention is concrete and tangible enough to describe.  Then as you make improvements you can file another provisional patent application if your want, or just move to a nonprovisional patent application.  If you are working on your invention you should not be filing a nonprovisional patent application because you cannot add new subject matter to a nonprovisional patent application.  You can, however, wrap together any number of provisional patent applications that have been filed within the last 12 months when you file your nonprovisional patent application.  Thus, provisional patent applications are absolutely ideal when you have something that could be protected now but you are continuing to work on refining, perfecting and supplementing the invention.

Another key benefit of a provisional patent application is that the Patent Office will not do anything with the provisional patent application unless and until you file a nonprovisional patent application claiming the benefit of the priority of the provisional patent application filing date. This means no more PTO fees and no additional attorney’s fees unless and until you want to move forward. Thus, you can lay the foundation for obtaining a patent, have a “patent pending” and conserve funds in the process. In my judgment the benefits are enormous. Critical to remember, however, is that a carelessly prepared provisional is a complete waste of time and money.



 

Reality check and importance of disclosure

Let’s take a step back though. As already eluded to, if you want to obtain a patent you are eventually going to have to file a nonprovisional patent application with the U.S. Patent and Trademark Office. In fact, you will need to file a nonprovisional patent application within 12 months of the filing of your provisional patent application in order to claim the benefit of that provisional filing. If you do file the nonprovisional patent application within 12 months then the filing date of your nonprovisional patent application will be deemed to be the filing date of your earlier filed provisional patent application, at least with respect to whatever you disclosed in the provisional patent application. That is why is is critical to disclose as much as possible. You only get benefit of an earlier filing date (the entire purpose and benefit of a provisional filing) if it was disclosed appropriately. So it is best to think of the provisional patent application as a lower cost way of starting your journey toward receiving a patent, but it is incorrect to think of the provisional patent application as a cheap way to start the patent process. The fact that it is lower in cost and doesn’t require formalities doesn’t mean you shouldn’t take it serious. A poorly prepared provisional patent application simply offers no benefit whatsoever, and can come with significant down side later.

Now for a reality check. Yes, when most patent attorneys prepare a provisional patent application it costs less because the attorney does not generally need to spend as much time as they would preparing a nonprovisional patent application.It is important to understand, however, that if you are hiring an attorney to prepare and file the application the fact that less time is required does not mean that little or no time is required. There is a big difference. The specification and drawings need to be complete, broad in terms of what is described and specific to make sure you are meeting all patentability requirements as of the date you file the provisional patent application. Cutting corners on the description of the invention in a provisional patent application makes it useless.

The reason that cutting corners makes a provisional patent application worthless is because in the United States in order for a patent application to be useful to ultimately lead to the protection of an invention the application must be complete as of the time of filing. This leads to a critical question though, namely what does it mean for an application to be complete? In general terms, a patent application will be considered to be complete when the invention is described so that someone else familiar with the technology could both make and use the invention having only read the patent application that is filed. In other words, your patent application needs to explain the invention with as much detail as possible. Essentially, you want to provide a description on par with the level of detail and explanation that would be included in a good instruction manual that describes both use and making of the invention.

Anything that is not included in the provisional patent application is not considered to be a part of your invention. For this reason you may hear patent attorneys explain that a provisional patent application is helpful to protect whatever is included in the application (as I said above). Said another way, the provisional patent application is only as good as the level of detail you include, which is why you want to not only describe your invention but also any possible alternatives and variations that are known to you at the time of filing. You see, when you prepare and file any patent application you want to make sure you cover not only what you have specifically invented, but you want to include alterations and variations that can be contemplated because if and when you start making money competitors will appear. The more scrupulous of those competitors will seek not to infringe upon your rights, which means they will seek to compete as closely and directly as possible but in a way that doesn’t technically and literally mimic your invention. Variations and alternatives are crucial to any patent application and provisional patent applications are no exception.

Another critical thing to remember is that alternatives and variations can be included in an application even if they are not optimal, and even if they do not work very well. This is where inventors frequently make big mistakes. Why would anyone want to do something that isn’t optimal? Look at the knock-off business that exists in any major city in the world. There is plenty of money to be made selling inferior products. You want a patent that covers what works best and what works period. If you were the first to invent the automobile you would want to have your patent cover the Yugo version, the Cadillac version and the Ferrari version and everything in between. So you need to think of your invention not only as what works best, but what works; no matter how crudely.

If you do elect to file a provisional patent application you do need to understand that a provisional application remains pending at the Patent Office for only 12 months from the date it is filed. I know this was mentioned above, but it is worth mentioning again because it is an absolute hard and fast deadline that cannot be extended for any reason. Yes, virtually all deadlines at the U.S. Patent Office can be extended if you are willing to pay enough, sometimes several thousands of dollars) but the provisional patent 12 month deadline cannot be extended for any reason PERIOD. Therefore, an applicant who files a provisional patent application must file a corresponding non-provisional application for patent (i.e., “regular patent application”) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

Going it alone without a patent attorney

In terms of what you need to file, although a patent claim is not required in a provisional application, the written description and any patent drawings of the provisional application must adequately support the subject matter of your invention in order to be useful later to establish priority. What this means it that care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed nonprovisional application. Drawings are your best friend in any patent application, and high quality professional drawings can be obtained for between $50 to $100 per page. Many inventors seek to cut corners to save money, and I completely understand the need to conserve. Drawings in a patent application is not a place to conserve. Drawings are worth at least 1000 words and forgive a lot of accidental mistakes in the written disclosure. It is better to think that you MUST have professional drawings in a provisional patent application.  Someone I have used frequently and have always been happy with is Autrige Dennis at ASCADEX Patent Illustrating. Autrige is not a sponsor of IPWatchdog, just a good guy who has provided good service to my clients at a very reasonable price.

For those who want to take the plunge and prepare their own provisional patent applications, whether out of desire or necessity, consider The Invent & Patent System.  This is an online, self-help tool I created that helps inventors create their own provisional patent application.  The cost to use the system is $99. For this price you get to use the system, which will help you create your own patent application, and then you receive instructions on how to format the application and file it yourself. This system has been in use for many years, I have my own patent application pending on the system,and it is an excellent way to save money while still getting quality output. It is, however, a do-it-yourself system.

When I developed the Invent & Patent System I created answer templates that can be used and multiple technology relevant examples that can be mimicked. These answer templates and examples, when used, force inventors to provide the critical information that will be required to ensure a complete application. This works to keep costs down because it is a collaborative effort and you are directing the process and providing the critical invention information rather than paying an attorney to describe what you know best — your invention.

If you are not comfortable creating a provisional patent application on your own, or you feel that your invention is particularly valuable and you want to start the process with professional assistance, I can help. Send me an e-mail message and we can discuss matters further. I have been helping independent inventors, small businesses and start-up companies since 1998. We can typically draft and file most provisional patent applications for between $2,000 to $2,500 plus the cost of any drawings (typically $200 to $300) and the government filing fee ($130). For computer related inventions, software, Internet applications and some highly complex inventions the cost of a provisional patent application is typically $5,000 plus the aforementioned costs of drawings and the government filing fee.  If you have us prepare and file a provisional patent application 100% of the attorneys fees are credited toward the cost of a nonprovisional patent application we also prepare and file.

Good luck, and please let me know if you have any questions or need assistance. For some good additional reading on this and related topics see:

NOTE: This article was originally published December 25, 2007 and has since been updated several times, most recently on September 14, 2013.

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Basics, Patent Drafting, Provisional Patent Applications


About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 


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45 comments
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  1. Hi Gene,

    Aegarding the fee for filing provisional application, I don’t fully agree with you. because one will have to convert the provisional application into a nonprovisional and pay the fee for the nonprovisional. As for the attorney fee, one will pay attorney twice, once for the provisional and another for the nonprovisional. If you add them together you will find that the only one who is gaining from this is the patent attorney, not the client.

    If the idea was not mature enough in inventor’s head while filing the provisional, or made some substantial changes on the main idea of the invention, then the provisional application is gone which means that the applicant will need to file another provisional and abandon the earlier, if not relevant to the idea. This is of course additional money spent. I know you will argue; what if you file a nonprovisional and then improved it. usually applicants do not file unless they are on solid ground and the rest of the world is living fine without the provisional application and facing no problem with that at all. I agree with you that there are some benefits in the provisional, but does this justify the cost?

    Best regards and enjoy the weekend.

  2. Mohammed-

    I don’t know which attorneys you are talking to, but you are mistaken on several levels. First, you should not have to pay twice for attorneys fees. When we prepare and file a non-provisional patent application for a client after having prepared a provisional patent application we credit the amount paid toward the creation of the provisional because we pick up and start working with the provisional patent application as our first draft of the non-provisional patent application.

    Second, if you make changes to the invention you are working on and you filed a proper provisional patent application on an earlier version you should not have to completely give up on that earlier provisional patent application. When you file a patent application you want to describe everything that works, no matter how crude. The patent gives you the right to exclude, so it is always a mistake to only describe what you plan on exploiting. A good application will cover what you plan on exploiting as well as what others may want to do. This protects you from the core market and also from inferior alternatives while giving you licensing opportunities for parts of the overall market you may not wish to pursue. See, for example:

    http://www.ipwatchdog.com/2011/04/01/key-to-drafting-excellent-patent/id=16132/

    http://www.ipwatchdog.com/2011/06/04/defining-invention-patent-application/id=17561/

    Now back to your first point… let me give you a couple examples of how my firm operates:

    Software —

    A fairly typical quote for a provisional patent application (through filing) for a software innovation is $5,000 for attorneys fees plus the cost of the provisional filing fee (typically $130) and the cost of any professional illustrations desired (typically $300 to $500).

    A fairly typical quote for a nonprovisional patent application (through filing) for a software innovation is $15,000 for attorneys fees plus the cost of the nonprovisional filing fee (typically $1,000 to $1,500, depending on number of claims) and the cost of any professional illustrations desired (typically $500 to $600).

    If we did the provisional the client has already paid $5,000 in attorneys fees, so the attorneys fees for the nonprovisional preparation and filing would be $10,000. Thus the total attorney fee does not change at all whether you start with a provisional or a nonprovisional patent application. The only extra cost is the $130 fee to file the provisional paid to the USPTO.

    Moderately Complex Mechanical Invention—

    A fairly typical quote for a provisional patent application (through filing) for a moderately complex mechanical innovation is $2,5000 for attorneys fees plus the cost of the provisional filing fee (typically $130) and the cost of any professional illustrations desired (typically $200 to $300).

    A fairly typical quote for a nonprovisional patent application (through filing) for a software innovation is $8,500 for attorneys fees plus the cost of the nonprovisional filing fee (typically $800) and the cost of any professional illustrations desired (typically $300 to $500).

    If we did the provisional the client has already paid $2,500 in attorneys fees, so the attorneys fees for the nonprovisional preparation and filing would be $6,000. Thus the total attorney fee does not change at all whether you start with a provisional or a nonprovisional patent application. The only extra cost is the $130 fee to file the provisional paid to the USPTO.

    -Gene

  3. I am thinking about the 20 year patent term. Can you get 21 years from the filing date of the provisional?

    In other words, for the price of a provisional can you get an extra year of patent term?

  4. MaxDrei-

    That is exactly right. The patent term does not run until you file a nonprovisional patent application, so with a provisional you can lock in the priority date for whatever is included and described in the filing without patent term running.

    Cheers.

    -Gene

  5. Mohammed,

    Are you saying it is best to go straight to a nonprovisional and skip the provisional?

  6. Max — the extra year is one of the reasons I file provisionals first.

    The small additional cost of this approach is well worth it to me.

  7. Actually, when provisionals were first made a part of US law, the reason for doing was said to be to put US inventors on a par with foreigners. That is, foreigners get to file at home and then use the Paris Convention to file in the US within one year, and the 20 year term only starts upon actual US filing, so that the foreigners could get 21 years from filling. Provisional applications were created to put US-origin applicants on equal footing, term-wise.

    All of this stuff about “provisional patents” and getting cheap filings are erroneous afterthoughts. Or deceptive marketing gimmicks.

    Gene, I do have to disagree with you a little bit about costs. The attorneys fees for filing a provisional and then a year later filing a non-provisional are usually at least a little bit higher than filing a non-provisional (What an awkward word! — can’t we come up with something more elegant?) from the start. The passage of 10-11 months makes the little grey cells get clogged with other matters, so it takes another hour or two to get back up to speed on the invention after that time.

  8. Another name for “non-provisional” Cowboy? In the 1949 UK Patents Act the terminology was “Application accompanied by a provisional specification” and “Application accompanied by a complete specification”.

  9. Not sure that language carries the day, MaxDrei.

    While admittedly rare, a provisional application can be directly converted into a non-provisional application with no additions whatsoever. That tends to rule out the ‘complete – non-complete’ dichotomy.

  10. Max, my friend, I was looking for more elegant, not more wordy.

  11. I can well understand AC’s distress, that we now have to label everything that is not a “provisional” application an “non-provisional” application, in order to distinguish them from the newly created class of applications called “provisional”. Just calling them all patent applications used to be so much easier.

    Anon’s dismissal of the terminology provisional vs complete, does not convince me. When one converts a provisional into a patent application with legs does not one, in a sense “complete” it?

    Wordy my proposal is not. I do not see anything more compact than that patent applications which are not provisional ones are complete ones.

    But never mind. In Europe we get by quite happily without the need for any of this terminology. We used it in the UK for the century prior to 1978, but it became extinct when the EPC arrived. Under the EPC one simply declares the priority of an “earlier application”. That “earlier application” might or might not be one filed at the EPO, the German national Patent Office, the one in CN or the one in DC. It might be a provisional one without claims or it might be a non-provisional one with claims. Does it matter which? Who cares?

    But then, decades later, the USA found it necessary to bring the “provisional” terminology back from the dead. Really, creating that zombie terminology was not necessary but nevertheless thanks, for it is delightful to be reminded of the quaint Olde English patent law terminology of my long-lost youth.

  12. Well, Max, you may very well have helped us come up with the elegant word: complete.

    “Inventors, you can file a provisional application, which is an incomplete application. Then, within a year, you must file a complete application if you want to get a patent at all.”

    Maybe even Legal Zoom can get that right.

  13. “Inventors, you can file a provisional application, which is an incomplete application. Then, within a year, you must file a complete application if you want to get a patent at all.”

    Brilliant

  14. I’m reading the words “helped us come up with” and on the subject of coming up with something, wondering, if the provisional/complete terminology were an invention, who should be named as its true and first inventor?

    On first mention, it got a very definite thumbs down. See above. So not obvious then.

    But, actually, not new either.

  15. Sorry guys, but my point on the lack of dichotomy stands as the legally correct position.

    The fact is that a provisional can be converted to a non-provisional. I admit this is rare, but it is nonetheless real. Please understand what happens with conversion. Conversion does not complete the application. There is nothing added. In fact, for converted applications the term date runs from the filing date of the provisional (one reason why these are rare).

  16. Not so fast, AC and Mark – I agree with Anon.
    Furthermore, the terms “incomplete application” and “complete application” are not only legally incorrect but they are insidiously dangerous.

    These terms are legally incorrect not only because a provisional application can be “converted” to a non-provisional application, but because any non-provisional application can claim priority to a provisional application having the identical disclosure as that of the provisional application (perhaps with more precisely-drawn formal drawings and typo corrections) without having to “convert” the provisional application. In substance, the non-provisional application adds no new matter to “complete” the provisional application.

    These terms are insidiously dangerous because they create an unspoken presumption (especially in the minds of lay jurors) that there might be missing substantive material (for supporting a claim under Section 112) in the provisional application that was later “completed” in the non-provisional application. Having to overcome this presumption that is created solely by terminology would be of greater concern.

  17. Thank you Ron,

    Recently (on http://www.ipwatchdog.com/2013/09/11/a-simple-guide-to-the-aia-oddities-first-to-file/ ), I lamented about the concerns I typically face with educating clients and how they should not think about provisionals (quick and dirty).

    It appears that not only clients, as well as the lay jurors that you quite correctly mention, but also many professionals need to be educated against accepting the insidious notion that provisionals are a base and incomplete form of patent application.

  18. Hi Gene,

    How long does a typical provisional patent take from filing to approve? How long does a none-provisional take? Also, where do you operate? I am in San Francisco, is it the best to find a local professional?

    Thanks,

    Tony

  19. Well, folks, a provisional is granted a full-fledged filing date even if it does not have claims, and there is no requirement for a declaration. If the claims are missing, the conversion to a non-provisional (or complete) application, requires completion.

    Frankly, so many inventors have goofy ideas about provisionals that will get them in trouble, that correcting those folks seems a higher public service than having to have your testifying expert spend a few extra minutes to explain to a jury that a particular provisional application is complete enough to justify entitlement to the provisional filing date.

  20. Tony-

    There is nothing for the Patent Office to “approve” with respect to a provisional patent application. You do not receive a “provisional patent.” There is no such thing as a “provisional patent.” You can file a provisional patent application as a step along the path to ultimately getting a utility patent. A provisional patent application lasts a maximum of 12 months and then goes abandoned. You must file a nonprovisional patent application within 12 months of the filing of the provisional patent application in order to continue to seek a utility patent.

    My firm and I work with inventors all over the U.S. and around the world. While I am physically located in Northern Virginia and my firm is headquartered in Florida I have represented inventors/companies from as far away as Australia and New Zealand. We can certainly assist you if you are interested in working with us.

    -Gene

  21. AC,

    Your exception does not disprove the legal rule I provided.

  22. AC: “a provisional is granted a full-fledged filing date even if it does not have claims

    A “full-fledged filing date” for what? – Only that which is adequate to support the putative claims. Provisional applications filed without claims are indicative of two likely problems: (a) lack of full consideration of what the actual inventions are, and therefore inability to ascertain that the disclosure is in fact “complete” in order to support later-drafted claims; (b) the inventor was not forced to contemplate design-around the putative claims by competitors, therefore has not come up with important alternative embodiments and related claim terms that are essential for preserving the equivalence doctrine to protect the invention (think LizardTech). In fact, because no claims fees are involved, it may be helpful to submit as many claims as one can think of in the provisional application.

    So, yes, AC is correct that such provisional application would be “incomplete.” The problem is that the notion that such application can be “completed” later is dangerously misleading – no substantive deficiency in claim support under Section 112 can be “completed” while preserving the priority date of the provisional application. In other words there is no real way to substantively “complete” a provisional application. This is why AC’s proposed adoption of this terminology is harmful to the process of educating inventors on their options.

    But filing a more “complete” provisional application should not end up with much larger legal expense to inventors because, if properly instructed, they can provide on their own much of the required material described above without taking too much of their patent attorney’s time, and in some cases even save billing time. I would think that particularly under the AIA’s First-to-File world, where allocation of time to file is critical, practitioners would prefer that inventors spend more time upfront on preparing material for the application before the ball moves to their court – having to minimize their component in any delay in filing the application.

    In sum, I view the provisional application rout as helpful only in (a) achieving a priority date while deferring filing expense; (b) deferring the cost of preparing formal drawings; (c) gaining one year to decide which claims ought to be filled first; (d) taking advantage of the additional one-year patent term under the Paris Convention; (e) using “incomplete” filing in unforeseen emergencies only – unplanned disclosure or public use of the invention.

  23. We are in full accord on this topic Ron.

    Well said.

  24. Ron says the filing of a provisional is helpful when:

    “(a) achieving a priority date while deferring filing expense; (b) deferring the cost of preparing formal drawings; (c) gaining one year to decide which claims ought to be filled first; (d) taking advantage of the additional one-year patent term under the Paris Convention”

    I agree. So much so that I wonder who in the world would NOT choose to go the provisional route? After all, it it not mandatory to disclose in a provisional less than a complete disclosure of your invention and who knows what further details of that invention you will conceive duriing the year after, to add into the complete disclosure you have already given in your provisional filing, when filing your follow-up non-pro.

    I have a question. Folks in Europe file non-pro as priority date defining first filing, in order to get out of the PTO a good value patentability search Report, to use when crafting their claims (and support for those claims) at the end of the Paris year. In the USA, is that an option?

  25. Max,
    Because the USPTO search results are provided upon first action, filing a non-provisional application in the USPTO may result in getting this information only after 22 months after filing – the average first-action pendency. The only way I can think of achieving your goal of a USPTO search report sooner is to file a PCT application as the priority application, designating the USPTO as the International Searching Authority (ISA). Under PCT Rule 42 and PCT Rule 43bis, you should be able to receive the International Search Report and ISA Opinion from the USPTO within 9 months because the receipt of the search copy by the ISA should be shortly after filing. Of course, that will cost more because the USPTO charges $2680 for PCT search and preliminary examination.

  26. Thank you Ron. I see from that that it’s a clear No. That’s not very helpful for US-based inventors is it?

    I wonder, do Americans ever file PCT as first filing, designating the EPO as ISR? An EPO search report is good value for money. But is getting a Foreign Filing Licence straightaway any problem?

  27. Ron, your criticism of filing provisional without claims is spot-on. My saying that it could be done was not meant to imply a recommendation.

    Anyway, we are trying to find a more elegant word than non-provisional, and you have made a case (not necessarily convincingly) that the word ‘complete” is not the right choice. Have you got something better to offer?

  28. Provisionals do not need claims and they can easily be filed while still fully and completely describing the invention without the claims.

    It is always amusing to me that those who write claims first say that the only way to file a legitimate provisional is to include claims. That is simply false.

    Not everyone drafts the claims first and it is clearly possible to produce high quality patent applications without drafting claims first. Indeed, as I have said many times before, many of those who draft claims first then write a very limited specification that does nothing more than support the claims drafted. A specification that does nothing more than support the claims drafted is unnecessarily narrow.

    -Gene

  29. AC,

    How about “Placeholder.”

  30. Gene,

    Suggest you read the “contained claims” and “effective filing date” provisions of the AIA before you give out advice like that of comment 28.

  31. step back,

    Do you feel that omnibus claims at least preserve any rights as may be affected by the AIA, or do you think the level of particularity will drive down to an element by element, limitation by limitation analysis?

  32. Anon, “placeholder” is fine as another word for provisional. We are looking for the replacement word for non-provisional.

  33. Anon, your comment “Suggest you read the “contained claims” and “effective filing date” provisions of the AIA before you give out advice like that of comment 28.” intrigues me.

    Which particular provisions of AIA are you alluding to? How do they flummox Gene’s assertion?

  34. @Anon #31: YES !
    I’m already including omnibus claims in first filings so I can later argue they were “contained” in and deserve the filing date of the first filing.

    The best place to stick in an omnibus claim is in the provisional. Otherwise, file them with your original application and then delete them before 1st action. The AIA merely requires it to be “contained”-in, not actually prosecuted.

    How will judges of the future rule on omnibus claims and the “contained in” requirement? I have no idea. But I’d rather be safe than sorry.

    (I’m glad there is at least one person out there who understands this issue. Thanks. ;-) )

  35. AC,

    How About “Enforcable.”

  36. step back,

    LOL – my pleasure.

  37. Aha.
    Patent-O takes on the “included claim” issue today:
    http://www.patentlyo.com/patent/2013/09/aia-changeover-claiming-subject-matter-not-found-in-the-provisional-application.html

  38. I have a provisional patent application (patent pending…as you mentioned). Can any company who might interested in my product can license it at this stage?
    Thanks,
    Joe

  39. Joe,

    Yes they can, but will they? That’s the hard question. It really depends upon how the company is set up. Some companies have active licensing programs and can understand and value provisionals. Others need to see an issued patent.

  40. Gene,

    Great article, as always. However, I feel a clarification is needed regarding your statement “[a]nother critical thing to remember is that alternatives and variations can be included in an application even if they are not optimal, and even if they do not work very well”. Many patent attorneys, including myself, do follow the “the more the merrier” approach with regard to provisional applications. However, some careful balancing is required here. When an inventor includes into a provisional application features that are not claimed in the priority-claiming non-provisional application, the inventor might, and in many cases will, shoot him/herself in the foot (so to speak) by being “102(b) barred” from ever receiving patent protection on those variations.

  41. Vladimir-

    There are certainly a lot of pitfalls and nuances, and now with the worry about transitioning from a provisional filed under first to invent and then a non-provisional filed under first to file there are even more things to worry about.

    This patent stuff is not easy, and why I always advise that if you can afford to hire an attorney that is what you should do.

    Cheers.

    -Gene

  42. If a “provisional patent application” is nothing more than a draft, a “non-provisional patent application” would logically become the “Final Patent Application” that the PTO “grades” as the final exam, so-to-speak. Not elegant but logical. What can I say? I’m an inventor not a scholar.

    Someone with extra cash sponsor my ideas please! :-)

  43. WannaBeRich-

    I don’t know that I would agree with your “final exam” analogy. The provisional needs to completely describe the invention to the same level of detail as would a nonprovisional. I’d rather say that the provisional patent application CAN BE like an early dress rehearsal where you go through all the lines but things are rough around the edges. All there but not pretty yet.

    It is true to say that provisionals need to be complete, but a good use of a provisional is to protect what you have as soon as possible. Let’s say that your invention may be 3 different versions — a cheap version, an intermediate version and an elegant/pricey version. You have the cheap version figured out but there is more to do on the other two versions by way of adding features and figuring out how it all fits together. Consider filing a provisional on the version you know now to get the earliest filing date. So it is best to say that the provisional needs to be as complete as a nonprovisional with respect to whatever you have at the moment you file. The formatting can work itself out later. That is why high quality drawings can be extremely helpful in a provisional patent application.

    -Gene

  44. Hello Gene,

    I’m not sure if my idea is patentable but will a Provisional Patent Application protect my idea while I start marketing my product (no one else can copy it) because I can use the Provisional Patent Application as a Patent Pending since I won’t know if it is patentable until I actually file for a Non Provisional Patent a year from the Provisional filing… Is that right?

    Does that make sense?

    Thank you for your help! Josee

  45. If somebody could clarify this for me…..provisional filed in US,only protects your invention in US? I should not even approach manufacturers that have their products manufactured outside of US? Thnaks