The Problem With Provisional Patent Applications

Andrew Schroeder asked:

The practice of using provisional applications used to be standard practice. Oftentimes, Provisional patent applications were drafted by the inventors and sent to the USPTO. As such, inventors would save a lot of time and money. Unfortunately, recent case law suggests that when provisional patent applications do not match up with the nonprovisional application, any ensuing litigation will be moot.

It used to be standard practice to send a provisional to the Patent Attorney for slight alterations. Unfortunately, these applications were poorly drafted and non enabling. In spite of this, it was an article of faith that as long as you filed the nonprovisional within one year you would be all right.

The main problem with this strategy is the fact that all of the elements and other enabling information must be in the provisional. Absent this information, the the resulting patent would not be enabled. Consequently, the patent would be void in a court room.

The concept of enablement boils down to whether the application describes all the parts, elements, 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.

Chief amongst the reasons why inventors prefer provisionals is the belief that they can defer a large amount of the cost. Therefore, if they can just get patent pending, they can take care of the rest later.

However, provisional patent applications, when properly drafted should not be a substantial cost savings. At best, an inventor might save 20-25% of the attorney’s fees. The reason for this is that most of the time is spent drafting the specification and drawings. And in many cases, it is standard practice to write a specification around the claims anyway.

Having said all that, if you do decide to file a provisional make sure you have an experienced patent attorney draft the provisional. This provisional should include all of the embodiments, parts that an ordinary nonprovisional would include. Furthermore, in you must provide professional.

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