Provisional Applications: The Good, the Bad and the Ugly

By Gene Quinn
January 20, 2018

I am a big fan of inventors using provisional applications as a first step toward obtaining a utility patent. Indeed, provisional patent applications provide many benefits. Provisional applications are a useful tool, but only when they are done right.  When provisional patent applications are done poorly you not only obtain no benefit, the filing potentially demonstrates you were not in possession of an invention, which could be catastrophically bad.

Poorly done provisional applications are almost certain to be useless for their intended purpose. Bad provisional applications 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 application. It is likewise important not to fall prey to those who knowingly or unknowingly prey on unsophisticated inventors.


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Patent Practitioners

First, let’s begin with the obvious. There are a variety of provisional patent services and course available on the Internet. A provisional patent application is a legal document. It is doubtful you would go to an auto mechanic for medical advice, or a doctor when your vehicle is in need of repair. Why then would you seek out the assistance or services of someone who is not a patent practitioner when you are seeking help with a provisional patent application?

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! While that should be rather self-explanatory, when it comes to patents and patent applications inventors have a way of convincing themselves of peculiar things.

The first rule of patents is this: When you need help preparing and filing a patent application you need the help of a patent practitioner, which means a patent attorney or a patent agent.

 

Drawings in Provisional Applications

There is a popular misconception about drawings in provisional patent applications. Many believe that drawings are not necessary in provisional patent applications, 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. This is very bad advice.

High quality, professional patent drawings are without a doubt the single best way to disclose an invention in any patent application. In a provisional application the goal is generally to disclose the invention quickly in an economically feasible yet business responsible manner. That absolutely must mean you are filing with patent drawings, hopefully at least several patent drawings and hopefully more. If you file high quality, professional drawings every drawing will tell its own story on its own. If you are doing what you are supposed to you will include at least one paragraph (hopefully more) describing what is shown in each figure. There is simply no way around it — drawings are essential!

Yes, provisional patent applications require fewer formalities. This means the focus can be on the disclosure of the invention rather than the form of the disclosure, but the disclosure must be as complete as a non-provisional patent application in order to provide a useful priority date. If drawings are necessary to understand the invention they are absolutely necessary in a provisional patent application.


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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 intimately familiar with patent law the best rule of thumb is that drawings are ALWAYS required, period.  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. Methods also technically do not require illustration, but there is invariably something that can always be depicted with any method. Therefore, you should include drawings, period.

Drawings are the cheapest, easiest way to expand any disclosure and should be filed with every application. It is foolish to skimp on drawings.

For those more familiar with patent laws allow me to recognize that effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA) changed the law with respect to awarding filing dates. Technically, a provisional application filed on or after December 18, 2013 will be given a filing date even if no drawings are filed. It is important to understand, however, that this leniency does not do away with the drawing requirement.

If no drawings are filed in a provisional application the applicant is notified and given time to submit at least one drawing to complete the filing. The problem, however, is there is a prohibition against adding new matter to an application without a new filing date being obtained. Because drawings invariably will show more than any text could possibly describe (i.e., pictures and drawings are worth one-thousand words) it may be theoretically possible to submit a drawing after the date of filing, but practically impossible to do so without violating the prohibition against new matter.

Therefore, when filing provisional applications drawings should be viewed as absolutely essential. There is simply no replacement for high quality, professional patent illustrations.

For more on this see:

A Complete Description in Provisional Applications

Drafting a patent application is not an easy task. Non-attorneys and non-agents just don’t understand the law. Follow bad advice and you suffer the consequences just the same whether the bad advice was handed out maliciously, intentionally or as the result of a lack of understanding.

provisional applicationsNow don’t get me wrong, provisional patent applications ought not to be feared as they are in some circles.  Having said this, you absolutely need to know that the description of the invention needs to satisfy the disclosure requirements of 35 U.S.C. 112 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(a), and pursuant to 35 U.S.C. 111 (see above) you need a drawing if required to understand the invention. Remember, you cannot anticipate adding a drawing later without re-filing a new application and getting a new filing date.

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 also means there are frequently no consequences for a deficient provisional patent application because many inventors never choose to file a nonprovisional patent application to actually seek a utility patent, which must be done within 12 months of filing the provisional application. See Provisional Patents: What they are and why you need them.

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 in a nonprovisional patent application. If your disclosure was not complete you may have compromised your ability to ever obtain a patent.

You may not realize the provisional applications you filed were defective until after you file the nonprovisional patent application and you are now working with the patent examiner who won’t give you the priority benefit of the earlier filed provisional application because it discloses little or nothing. Filing a defective provisional application can be catastrophic.


Describing your invention completely is absolutely critical in any provisional application. For more information on how to do that please see:

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Patentpixie January 20, 2018 8:21 am

    Gene, how do you feel about the iterative provisional process, in which in light of a change to a first-to-file system, inventors file whatever development they have asap, even if its not well written, and then maybe follow it up with a provisional that is bit better when they have the resources? Since different claims can have different priority filing dates, do you think this could be a worthy strategy for cash-strapped startups? So long as they know what they are likely not getting if the provision isnt written to be attorney-grade?

    Thanks for your articles, this website is where I sent lots of inventors so they have some background knowledge.

  2. Anon January 20, 2018 10:42 am

    Bravo.

    Truly one of my pet peeves and something that I have spent an inordinate amount of time (re)educating clients who have dealt with other counsel and believe that provisionals can be nothing more than cheap and quick filings of marketing presentations.

    Sage advise here – thank you Gene.

  3. Gene Quinn January 20, 2018 12:39 pm

    Patentpixie-

    I am absolutely in favor of filing serial provisional applications, which have only become more important in a first to file world where we really do have a race to the Patent Office because of the extremely limited utility of the AIA grace period. Take a look at:

    http://www.ipwatchdog.com/2016/09/17/provisional-patent-applications-the-right-way-the-wal-mart-way/id=72979/

    Your comment goes on to say: “even if its not well written…”

    That is where I would disagree. I think real damage can be done by provisional applications that are sloppy. They don’t have to look like a nonprovisional patent application, although that is preferable for a variety of reasons, but they do have to describe the invention with the same level of detail as a nonprovisional. This is why drawings are so critically important in my opinion. If you have access to a professional illustrator, or someone with CAD skills or 3D skills, or even an technical artist, those drawings you get will convey a lot of information in and of themselves. There are a lot of strategies that can be used, and giving legal advice on the Internet is impossible, but I could envision a scenario where CAD drawings were available, a variety of angles and views were captures and filed as a provisional patent application. Then in the ensuing days a more detailed provisional with text is filed, and then in the ensuing days even more text and perhaps further drawings are filed. I have no problem with that strategy, and in fact I think it makes sense.

    Filing what you have when you have it to capture a filing date as close in time to having it in a first to file world seems prudent. I just don’t like the characterization of “not well written” because it implies sloppy.

  4. Dennis Dohogne January 21, 2018 5:48 am

    I have always had the attitude that the provisional application, for it to provide the best foundation for the full utility patent, should be as complete as possible, with the exception of the claims. Since the claims are really the only thing that can be easily amended that makes all the other components, the drawings and specification, more important than a lot of people consider.

    Certainly, as the inventor evolves the design there may be need to add new matter, either for additional/alternative embodiments, or for more complete description. However, if the provisional application is treated as the inventor’s first, best shot then they should make it as complete as possible.

  5. James Stott February 1, 2018 2:47 pm

    I know that photos can’t be used in a non-provisional application. However, what do you think of photos in a provisional application in order to show invention and give clarity. Fast and less expensive…

  6. Gene Quinn February 1, 2018 4:53 pm

    James-

    Photos are almost always not as good as patent drawings. Very few photos I’ve ever seen filed with a patent application were useful in disclosing an invention. There are a variety of reasons for this. In my opinion there is no substitute for high quality, professional patent illustrations. I say that as one who has no artistic or illustration skills, and as an amateur photographer.

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