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Provisional Patent Applications – an $85 Nightmare?

How does an $85 patent you file yourself sound?
All you need to file a provisional patent application is:

1) The filing fee;
2) A written description of the invention, complying with all requirements of 35 United States Code §112;
3) Any drawings necessary to understand the invention, complying with 35 United States Code §113
4) A cover sheet containing:

a. the application as a provisional application for patent;
b. the name(s) of all inventors;
c. inventor residence(s);
d. title of the invention;
e. name and registration number of attorney or agent and docket number (if applicable);
f. correspondence address; and
g. any United States Government agency that has a property interest in the application.

Since 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the opportunity to file a provisional patent for $85. The major difference between a provisional patent application and a standard utility patent application is that a provisional patent application does not need to include “claims.” As inventors typically must enlist a patent lawyer to draft the claims, by avoiding the claims, inventors can avoid patent lawyers and the associated costs. This primary advantage of a provisional patent application is also its greatest drawback.

Claims are the very heart and soul of a patent. Claims determine the scope of a patent, whether it is good or bad, broad or narrow. As you might imagine, drafting claims is very technical. Additionally, the drawings and rest of the patent have to support the claims. If you do not have the claims, how do you know what you need to support? Even with their specialized training, patent lawyers find drafting claims and anticipating the necessary support to be very difficult. I myself, even after a decade and a half of drafting over one thousand claims still have to draft the claims first.

If you file a provisional patent without claims, to preserve your filing date, you can only add claims fully supported by your application and drawings. If a patent lawyer would balk at such a task, it might be wise to reconsider a provisional patent. You still may get a patent, but the provisional nature of your application may irreparably compromise the value of your patent.

The USPTO offers these additional drawbacks associated with provisional patents applications:

1) The USPTO does not examine provisional applications on their merits;
2) You cannot get a patent based upon your provisional application if the one-year deadline for filing a non-provisional application has expired;
3) Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic;
4) In order to obtain the benefit of the filing date of a provisional application the claimed subject matter in the later filed non-provisional application must have support in the provisional application;
5) The inventor(s) named in the provisional application must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the application;
6) The non-provisional application must have one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date;
7) A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application;
8) There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application;
9) Provisional applications for patent may not be filed for design inventions;
10) Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations;
11) No information disclosure statement may be filed in a provisional application; and
12) A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of the provisional application filing date:

a. a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or
b. a grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.

That is quite a list. If all you want is the ability to say your invention is “patent pending”, and you do not care about protecting your invention, a provisional patent application is probably the way to go. Otherwise, next to signing up with an invention promotion scam, filing a provisional patent may be the worst mistake you ever made. The false sense of security of a provisional patent application might be enough to put your hard earned invention into the public domain.

Brett Trout

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