Good, Bad & Ugly: Truth About Provisional Patent Applications

By Gene Quinn
March 22, 2011

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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 23 Comments comments.

  1. step back March 23, 2011 6:20 am

    Gene,

    Great topic. Bravo.

    However, just to drip a first droplet of ice water on your above analogy about brain surgery, it should soon become evident that each of us treads on thin ice when stepping forward into an area that we are not well grounded in. (Hence, I caution people to “step back”, learn some more and think about it rather than rushing blindly forward toward a precipice from whose fall they might not be able to later recover.)

    A “psychiatrist” is a medical doctor (MD) whose specialty is brain disorders. Psychiatrists are licensed to prescribe medications (i.e. Prozac) to their patients and are trained to understand when a more rigorous neurological workup by a neurologist may be needed. Someone who is truly a “psychiatrist” (a MD) would generally not perform brain surgery unless they also happen to be a brain surgeon.

    What you meant to say is “psychologist”. Those are the people you go to for lying (and laying) on a couch and screaming your primal fears out to them.

    Probably a better analogy would have been one pointing to a freshman in college who is halfway through a Psychology 101 course and who also slept one night at a famous name brand motel chain.

    With that said, we can move onto the slippery and thin iced surface of Provisional applications, the good, the bad and the ugly of them.

  2. step back March 23, 2011 6:24 am

    A first pitfall of Provisionals is that too often people (including professional practitioners) assume that just because they can get away with not drafting and including claims in a Provisional they should do so. Big mistake.

  3. Blind Dogma March 23, 2011 7:39 am

    Gene,

    The only critical flaw I see in this article is:

    After your third martini at lunch?

    There are no martinis in the Kool-Aid collection, but I believe Stan is working on a Delusional Delight. I will leave it up to him to share the ingredients.

  4. ben ford March 23, 2011 9:19 am

    The biggest problem with all this is small entities have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet small entities create the lion’s share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” Congress is rushing headlong into disaster. This bill will be a wholesale slaughter of US jobs.

    This bill will not do what they claim it will. What it will do is help large corporations maintain their monopolies and kill their small entity and startup competitors (which is exactly what they intended it to do) and with them the jobs they would have created. Those wishing to help in the fight to defeat this bill should contact us as below.

    http://www.ieeeusa.org/policy/policy/2011/021511a.pdf

  5. American Cowboy March 23, 2011 9:20 am

    Now I see why so many members of the patent bar advocate switching to First to file! You get more work out of it!

    Instead of telling the inventor to perfect his invention and perhaps see how it sells for a couple of months before spending money on a patent application, you tell him he needs to have you draft a provisional NOW and to have you add additional provisional filings as the invention becomes developed. Boy, was I ever naive in thinking I should advocate what is best for the inventor.

  6. Gene Quinn March 23, 2011 9:23 am

    Step-

    I actually really did mean psychiatrist. I understand what you say about psychologists, and debated whether to use psychiatrist or psychologist. I can’t imagine anyone in their right mind would think that a non MD psychologist would be capable of performing brain surgery. What we hear from scientists with some frequency is, as far as I can tell, directly correlated with the brain surgeon vs. psychiatrist example.

    Can scientists competently draft and create patent applications? Yes, if they are patent attorneys or patent agents with the appropriate level of experience.

    Can scientists who are not patent attorneys or patent agents create a patent application as detailed and nuanced as a patent attorney or patent agent? Absolutely not, but they think they can as a result of a combination of ignorance, arrogance and perhaps a few other “ances.”

    -Gene

  7. Gene Quinn March 23, 2011 9:28 am

    AC-

    Really? If that is your understanding I don’t know what to say to you to get you to understand.

    Did you read this:
    http://ipwatchdog.com/2011/03/20/patent-truth-and-consequence-file-first-even-in-the-u-s/id=15814/
    or this:
    http://www.ipwatchdog.com/2009/10/30/the-risk-of-not-immediately-filing-a-patent-application/id=7014/

    Regardless of whether we have a first to file or first to invent system as an inventor you are ALWAYS better off filing earlier rather than later. Inventors universally don’t understand what “first to invent” means because it DOES NOT mean the patent goes to the first person to invent. So if your argument against first to file is that it will give more work to attorneys then you obviously don’t understand the issues, what inventors should already be doing and what it means to be “first to invent.”

    -Gene

  8. Ron Hilton March 23, 2011 9:28 am

    I also strongly believe that claims are highly advisable in a provisional, albeit not required by statute. One reason is that the inventor usually does not know exactly what they have invented at the outset. They sense that have come up with something different and better than “what’s out there” but have not pinpointed the key elements that actually make it novel. They may believe that their disclosure is enabling, but have omitted or glossed over some details that turn out to be critical differentiations from the prior art.

  9. Paul F. Morgan March 23, 2011 11:23 am

    Loved your analogy, which I have used myself. Even large companies sometimes have “chief scientists” or “licensing executives” who publicly pontificate as if they were experts on patent law. Sometimes with material written by law professors who have never practiced patent law either, or from media reports on patent law, which are regularly erronious. [E.g., earlier this week there was a media report on Apple litigation written by someone who obviously had no clue [and never checked ] even as to the difference between a trademark and a patent.]
    As to provisional applications, if they do not have either claims or adequate descriptions of the invention that could become claims they may have two problems getting apriority date benefit: meeting the now-CAFC-enforced 35 USC 112 “written description” requirement [recently held to be separate from the enablement requirement], plus a p;otentially inadequate basis for getting priority in a foreign application filing.
    But delaying application filings is a gamble that one can lose under either FTI or FTF. Even if publications or other art by others in the meantime are not 102 fatal, they can still present 103 problems that can significantly narrow available claim scope.

  10. Puzzled March 23, 2011 3:01 pm

    Gene —

    Today you write something I fully agree with —

    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.

    Today you’re telling us an inescapable truth, that a provisional takes much of the same care for substance (if not the full Monte of form) as a nonprovisional. AIPLA’s Economic Survey agrees with you today, that a provisional costs on average $5000 of attorney time (plus an unmeasured amount of inventor time).

    But a couple weeks ago you were saying that provisionals were the essentially-zero-time-cost panacea to the timing problems created by the weakened grace period in the Patent Reform bill.

    OK, now we have a contradiction. If provisionals require real care today, but were essentially zero cost two weeks ago, can you please reconcile?

    I agree with Paul, that “delaying application filings is a gamble that one can lose under either FTI or FTF” But mere existence is pretty irrelevant — the relevance is the comparison of the scale of the two risks. Because the population of prior art is so much bigger under S.23 than under today’s law, and the options for dealing with prior art are so much narrower, the amount of risk for waiting is far larger. Also, under S.23, the fact of the lost priority date will become apparent before the statute of limitations runs out, where it usually doesn’t until after under current law. Wait til your malpractice carrier figures these out.

    Gene also writes, an inventor is “ALWAYS better off filing earlier rather than later” — which I agree with, subject to three constraints: (a) attorney time is free, (b) inventor time is free, and (c) they have access to an oracle that can predict whether they’ll still think the invention is worthwhile in a few months, an oracle that substitutes for the information that they are allowed to gather under today’s law, but where the risk of waiting will be much greater under S.23. If you know of a world in which (a) (b) and (c) are true, please explain.

  11. Gene Quinn March 23, 2011 4:09 pm

    Puzzled-

    I did not say that there was zero time and zero cost associated with provisional patent applications. I merely pointed out that those who want to pretend that provisional patent applications are extremely costly and extremely time intensive are flat wrong.

    Have you taken me up on learning how my streamlined approach to creating provisional patent applications works? I don’t think that you have, since no one has, so I don’t know how you could be confused or puzzled really. It would seem your confusion is self inflicted given that you decided not to take me up on my offer, making it curious as to why you think it is appropriate to try and pretend you caught me in a contradiction. If you took the offer provided you would understand and all would be clear, so why the pretending about the contradiction? The detail of your comment suggests you are in the industry and that makes me wonder what agenda you have and why you are having difficulty parsing out what seems abundantly clear.

    First, you need to lose the myth that provisional patent applications take a ton of inventor time. As I pointed out previously those, like you, who say that outright refuse to have me demonstrate my streamlined system that take no more than 60 minutes of inventor time. So obviously you have an agenda. You seek to say that I am wrong, yet you put your head in the sand and refuse to accept prove and education. Not surprising since you seem to prize anonymity and would rather poke holes rather than participate in learning.

    In any event, there is no doubt that a provisional patent application must be complete in terms of disclosure. How you come by that disclosure differs from attorney to attorney and I do not create a nonprovisional patent application and file it as a provisional patent application. There is really no benefit to do that in most scenarios. As I always say, and either you don’t understand or don’t appreciate, I work with inventors where there is continuous and ongoing innovation and not a finished invention when I start working. That is, in fact, typical for independent inventors and start-up or small businesses. As I have explained quite a lot recently you can protect an invention far before it is complete, making a provisional patent application initially a perfect choice.

    In the earlier debate you cite we were talking about first to file versus first to invent and many (perhaps you included) want to pretend that invention notebooks are fine and first to file is awful because you would have to spend great money and great time to prepare a provisional. That is simply false. If your invention notebook provides enough to be useful to demonstrate conception then it provides enough to support a provisional patent application that would create a meaningful priority date. All you would have to do with that invention notebook is slap on a provisional patent coversheet and it would be an awesome disclosure. Of course, the trouble is that most think that cryptic notes in an invention notebook suffice, but that is not true. So if your notebook isn’t good enough to be a provisional patent application then it isn’t good enough to provide proof of earlier conception.

    So what I am saying now is completely consistent with what I said earlier. You need to have your conception described so that others can understand what the invention is. That is required to prove earlier conception and it is the level of detail necessary for a provisional patent application. So saying provisional patent applications need to adequately and completely disclose the invention doesn’t mean they have to be expensive, particularly with those continuing to invent. Inventors can and should file piecemeal provisional patent applications as they make advances.

    If you don’t want to accept the offer of illustration on how to prepare low costs and high quality provisional patent applications that do adequately disclose an invention that is up to you. If you want to do it in the privacy of your own home without me knowing who you are then go and purchase the Invent + Patent System at:

    http://ipwatchdog.com/patent/invent-patent-system/

    If there are any businesses that want to learn how they can create low cost provisional patent applications to protect their inventions as they proceed let me know.

    -Gene

  12. step back March 23, 2011 4:41 pm

    Bottom line is that Provisionals should be taken as a “serious” filing.

    What you say in a Provisional can come back to haunt you (assuming you don’t let the Prov go unused).

    What you don’t say in a Provisional can come back to haunt you.

    It’s not a game.
    It’s not cheap and dirty.
    It can be a useful tool in the skillful hands of those who know what they are doing.

  13. EG March 23, 2011 4:52 pm

    For those who think drawings are unnecessary in provisionals, check out New Railhead Mfg v Vermeer (CAFC 2002). In that case, a key feature claimed in the resulting patent which was described in the nonprovisional but was missing from the specification and drawings of the provisional, caused the patent to go down because the patentee couldn’t rely on the filing date of the provisional for failure to comply with the written description requirement. Those who write provisionals but ignore the requirements of 35 USC 112, first paragraph and 35 USC 112 do so at their peril.

  14. David Boundy March 23, 2011 6:23 pm

    Gene —

    I’ll take you up on your offer, but not today. Flat out for the next couple days. I share “Puzzled” puzzlement. No agenda, other than testing your hypotheses and facts.

    As prep, please go to public PAIR and look at provisional application 60/176,610 — oh nuts, PAIR is broken for provisionals, look at Pat. No. 7,228,404 which is 95% similar. The inventors gave me about half of the final 65 figures, I had to gin up the rest for myself. They had no written writeups extant outside the patent process, all 147 columns of specification had to be drug out of the inventors word-by-word.

    Because it was a very complex and interrelated set of inventions, for a startup, with lots of inventions popping up, explored for a while, then dropped from both the product and the patent, the company fully exploited the 102(a) grace period until product announcement. Lots of inventions were dropped before filing because they turned out to be worthless.

    Be ready to tell me how your “streamlined system [would have gotten a legally-sufficient provisional together in] no more than 60 minutes of inventor time.” Also tell me how your system would have handled the dud inventions that turned out to be worthless at a cost competitive with what the company spent under current law (essentially nothing, since they never filed on them at all). By the way, the duds were as intense as the ones you see here.

  15. David Boundy March 23, 2011 6:23 pm

    Gene —

    I’ll take you up on your offer, but not today. Flat out for the next couple days. I share “Puzzled” puzzlement. No agenda, other than testing your hypotheses and facts.

    As prep, please go to public PAIR and look at provisional application 60/176,610 — oh nuts, PAIR is broken for provisionals, look at Pat. No. 7,228,404 which is 95% similar. The inventors gave me about half of the final 65 figures, I had to gin up the rest for myself. They had no written writeups extant outside the patent process, all 147 columns of specification had to be drug out of the inventors word-by-word.

    Because it was a very complex and interrelated set of inventions, for a startup, with lots of inventions popping up, explored for a while, then dropped from both the product and the patent, the company fully exploited the 102(a) grace period until product announcement. Lots of inventions were dropped before filing because they turned out to be worthless.

    Be ready to tell me how your “streamlined system [would have gotten a legally-sufficient provisional together in] no more than 60 minutes of inventor time.” Also tell me how your system would have handled the dud inventions that turned out to be worthless at a cost competitive with what the company spent under current law (essentially nothing, since they never filed on them at all). By the way, the duds were as intense as the ones you see here.

  16. Gene Quinn March 23, 2011 6:32 pm

    David-

    First let me say I don’t think you have an agenda. You are a straight shooter. We agree sometimes, disagree sometimes, and you always attach your name to your opinions. I admire that greatly. I am, however, always tempted to wonder what the agenda is for those who prefer to remain anonymous.

    If you want to know how to provide hundreds of thousands of dollars of legal work in 60 minutes I’m afraid you will be disappointed. If you think there is a magical way to come up with 75 pages of single spaced patent text in 60 minutes you will be disappointed as well. But we both know what you are describing is not the norm.

    If you had to gin up the rest of the drawings and needed to work that hard I sure hope you listed yourself as an inventor, because it would be extremely rare for one to add that much and not have contributed conception somewhere. This is a huge problem in and of itself. Professional inventors and businesses want to provide cryptic notes and have the patent attorney and agents invent and turn over the rights. It sounds to me that the trouble you have, as illustrated by your comment, is that there is no invention. My streamlined system cannot handle the scenario where there is no invention yet.

    I will also note that your inventors who had no written write-ups wouldn’t have been able to prevail in an interference and they wouldn’t have even been able to swear behind legitimately.

    I agree with you that the loss of the grace period is bad and ought not to happen, but that isn’t a first to file issue. We can have first inventor to file (i.e., get rid of interferences) and still have a grace period.

    It is, however, extremely risky to rely on the 12 month grace period given that third party activities unknown to the inventors can and frequently do start the 102(b) clock running.

    -Gene

  17. Stan E. Delo March 23, 2011 8:06 pm

    David B-

    Pretty astouding that you actually got a patent allowed, after seeing the 3 full pages of patent references and publications that you had to work around. Nicely done!

    Stan~

  18. David Boundy March 23, 2011 8:28 pm

    Gene –

    So you seem not to disagree — Are we agreed that this company would have been harmed by S.23? And provisional patent applications are NOT a cost-effective solution for 100% of S.23’s problems?

    And are we agreed that S.23 is S.23 as it’s currently worded, it’s not been magically tranformed into a “first-to-file only” bill limited only to tie-breakers that we’d all prefer?

    And I’ll agree with you, that relying on the 102(a) grace period is risky. But I agree with Puzzled — you’ve neglected the basic business fact, that in the real world, businesses (especially startups) are constantly caught between multiple risks, and you have to choose the lower of them. The world does not revolve around patents! For this company, as with several others (including a division of HP where I was an engineer in the 1980’s-90’s, it’s not only small companies), waiting to file was the lower-risk lower-cost strategy.

    David

  19. Stan E. Delo March 23, 2011 8:58 pm

    I once had a Very clever patent agent suggest that in my situation, multiple *Desk Drawer Filings* (DDF’s) might be my best option, while I was investing time and money into what seemed to be the most financially attractive *invention*. I have gotten a bit fatalistic about it I suppose, as I can really only afford the time to develop one invention at a time, and if someone else gets to one of my DDF’s before I have the time and money to do so, more power to them. The system will still work, but maybe just delayed for a few years until I or someone else can get to it.

    BD- I am thinking about a Dandelion tea base for the Delusional Delight flavor, tinted green with a bit of Mint, with a fairly heavy infusion of Worm-wood, which is the basis for the whole Absinthe sorta thing, but without the alcohol in my blend. Maybe a little nutmeg or something as well?

    Stan~

  20. Gene Quinn March 24, 2011 11:42 am

    David-

    I am not sure we are agreed that S. 23 would have harmed, nor am I convinced that provisional patent applications aren’t the answer. Certainly, provisional patent applications are not the answer the way they are currently handled. There is a tremendous inefficiency in the way that virtually all companies handle the creation of disclosures and the turning over of those disclosures to attorneys/agents. The universal practice seems to almost intentionally be calculated to take more time and cost more money. The trouble is that companies don’t want to change at all and just want to demand more work for less money from attorneys. So from my perspective most companies are whiners that simply don’t want to take any time at all, no matter how little, to help streamline the process.

    I do think that we certainly agree that the language of S. 23 is not only going to create a first to file only system. My problem, however, is it seems that some have demagogued the issue of first to file rather than focusing all efforts on the grace period. Clinging to the belief that first to invent is necessary to help small businesses and independent inventors isn’t a wise strategy given the unassailable facts of interference practice and the reality that almost no applications have 131 affidavits filed to swear behind for a variety of reasons. I think you have remained laser focused and I think if others who oppose the changes to 102 in S. 23 would let you lead the charge and talk about what is really the problem they would be better served. Trying to play to fears and passions hasn’t worked and has been, for me, rather disconcerting.

    Waiting to file is always an option, but it has always come with risks. If the world doesn’t revolve around patents and it is too difficult to get engineers and scientists to accurately record what they have done then it doesn’t matter whether we have S. 23 or the current first to invent system.

    -Gene

  21. Anon March 24, 2011 2:37 pm

    For a detailed slice by slice of many things wrong with S. 23, visit the respected blog of the Patent Docs.

    But do come back here too. This has become one of the top patent blogs thanks to Gene’s diligent efforts.

  22. steve November 8, 2012 10:48 am

    So this is a great article and some great debates but it still leaves me wondering if a provisional can be effective when filed by an inventor and if I am going to use an agent, why not file a patent app? is the cost that much greater?
    what are the true advantages to a provisional app?

    also wondering….if i use a ppa to establish a date and then after several months of working through the product we find considerable changes would this not lose the rights of the original ppa? could a new ppa be filed and drop the original?

    so many unknowns, that is why an agent is good to rely on.