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Provisional Patents are Naked

I have said it for over a decade and now someone else is joining the choir. The provisional patent emperor has no clothes. Since 1995, I have warned clients against the dangers of filing provisional patent applications. Except in a limited number of very special circumstances, provisional patent applications run the risk of placing invaluable intellectual property into the public domain.

Legal blogger Erik Heels has a nice little blog post (complete with drawing) on why provisional patents are a very bad idea for most small companies. Like me, Heels believes “it is not possible to write an effective patent specification without writing claims.” When clients wanted a provisional patent, he would write the claims and then just not file them.

Heels found he was spending as much time writing the provisionals as he spent writing full utility applications. He finally decided that writing provisional patent applications was not only a bad idea for his clients, it was a bad idea for him as well. His firm has since stopped filing provisional patent applications because they “falsely raised the expectations of our clients about cost savings and were rarely the right solution.”

While I guess that was one way to do it, I merely directed stubborn clients to another firm in town who I knew would be happy to oblige their Jones for a provisional patent. I may have lost a client or two, but I saved myself a lot of headaches. I would love to have been a fly on the wall when their new patent attorney explained to them why they ended up spending much more money for much less protection than if they had filed a standard utility patent application instead of a Paper Tiger.

Brett Trout

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