The Dangers of Provisional Patent Applications

Lawyers in the USA

Provisional applications used to be the very first step of the patent application process. Provisional applications were typically written by the inventor and then sent over to the USPTO. Sometimes, these provisionals were proof read by a patent attorney even though they were incomplete. As a result, inventors would save time and money. Unfortunately,case law now requires that provisional patent applications be completely enabling and nearly match up word for word with their non provisional counterparts.

The main problem with Provisional applications is the fact that all of the enabling information has to be provided in the provisional. And this provisional must match up with a high degree of similarity with the non provisional in order to be in pendency. If this requirement is not met, then the subsequent patent will not be enforceable at trial.

The concept of Enablement requires that the patent show all the pieces, steps, and embodiments necessary to teach one skilled in the art how to make and use the invention. As such, the specification and the drawings must be complete.

One of the main reasons that people used to prefer provisionals over non provisional patent application is the idea that they can put off a large amount of the cost. Moreover, it used to be thought that they can get your foot in the door a lot quicker, and then you will be patent pending a lot sooner.

The fact is that provisional patent applications should only be able to save 20-25% of the attorney’s fees if done properly. The reason for this is that most of the attorney’s fees are directed to the specification and drawings. And for many patent attorneys, the specification is broadly outlined from the claims to begin with.

For these reasons, in the event that you do choose to use a provisional you need to make sure you have an experienced patent attorney draft the provisional. The application must include all of the embodiments, parts that an ordinary nonprovisional would include.

About the Author:

Los Angeles County Patent Attorney

Patent Attorney in Los Angeles County


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