Good, Bad & Ugly: Truth About Provisional Patent Applications
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Oct 19, 2013 @ 9:05 am
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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, which could be catastrophically bad.
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 had not ripened past the idea stage at the critical moment the invention was memorialized at the time of filing the provisional patent application. 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 all of those courses and methods are bad, but 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 professional, which means a patent attorney or a patent agent.
Drawings in a Provisional Patent Application
There is a popular misconception about drawings in a provisional patent application. Many believe that that drawings are not necessary in a provisional patent application, and some non-attorney services and courses suggest that drawings are not required. Apparently the belief is that the requirements for provisional patent applications are different than for non-provisional patent applications. This is simply not the case. Yes, provisional patent applications require fewer formalities and the focus can be on the disclosure rather than the form of disclosure, but the disclosure must be as complete as a non-provisional patent application in order to provide a useful priority date. Thus, if drawings are necessary to understand the invention they are absolutely 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.
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.
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. Notwithstanding, I would greatly prefer that newbies read that as the United States Patent and Trademark Office being extremely lenient 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 really is worth at least a thousand words in a patent application and is a great way to expand upon a written disclosure to provide additional information about the invention. For more on this see:
- Patent Drawings
- Patent Drawings: An Economical Way to Expand a Disclosure
- Patent and Invention Drawings: What Do You Need?
So follow the advice that provisional patent application can be filed without drawings at your own risk!
A Complete Description
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. 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. The damage that will be done is the same regardless of benevolence or lack thereof. 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.
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 to bad to outright ugly applications that do real damage. The fact that provisional patent applications are not reviewed by the Patent Office means there are seemingly no consequences for a deficient provisional patent application.
Describing your invention completely is absolutely critical in a provisional patent application. For more information on how to do that please see:
- Working with Drawings to Create a Complete Disclosure
- The Key to Drafting an Excellent Patent — Alternatives
- Drilling Down on Variations in a Patent Application
- Tricks & Tips for Describing An Invention in 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. You may not realize that the provisional patent application you filed was defective until after you file the non-provisional patent application and you are now in prosecution working with the patent examiner who won’t give you the priority benefit of the earlier filed provisional because it discloses little or nothing. Filing a defective provisional patent application can be catastrophic.
Don’t Be Afraid of Provisional Patent Applications
I use provisional patent applications all the time. The majority of those who I work with are inventors who come to me early in the process. They have something more tangible than an idea and would like to protect whatever they can before they move forward because they are going to need some help of one kind or another. Protecting what they have establishes their rights before seeking outside assistance, funding or partnerships.
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. Indeed, many who are new to inventing are surprised to learn that there is an invention worth protecting earlier than you might expect in many cases. It is in these cases where the inventor has something that can be protected but is continuing with development that provisional patent applications are most useful. 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 non-provisional patent application. Thus, 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 works just fine with inventions commonly made in your garage as well as software or even sophisticated basic science. Universities employ this strategy with highly sophisticated inventions all the time in fact. Indeed, this use of provisional patent applications to protect innovation at its earliest point should be employed by everyone who is proceeding to create an invention, particularly now that the U.S. is first to file and there is strong reason to get a quality disclosure on file as soon as possible. So lock in your priority date as early as possible relative to whatever you can describe.
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.
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.
About the Author
Gene Quinn 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.