Don’t Run; Walk Slowly: What We’ve Learned From 27 Years of U.S. Provisional Patent Applications

Every experienced patent attorney has had a client who wanted – ASAP – to file a provisional patent application. Sometimes there is a good reason to quickly file a provisional application. Often, however, the desire for a rushed filing is based on an emotionally excited inventor who believes the invention will generate a pile of money.

The real function of a provisional patent application has been overshadowed by the notion that it is a quick and cheap way of obtaining a “Patent Pending” designation. This notion has become so deeply ingrained that it is very difficult to convince someone to slow down (especially when they are all wound up about a “sure thing” monetary return on their invention).

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THE TRUTH

The truth starts with an explanation of what a provisional patent application is and its true purpose. A provisional application is simply a placeholder. It will never get examined. No one at the U.S. Patent Office (except the database in which it resides) knows about it or cares about it. The only step that will make a pro-visional patent application effulgent is to file a nonprovisional patent application (formerly known as a “utility patent application”) within a year’s time – thus, the placeholder role.

Simply put, the purpose of a provisional patent application is to obtain a filing date for a description of an invention. While it is true that many of the formal requirements of a nonprovisional patent application do not need to be satisfied in a provisional application, a description of the invention is essential. Generally, the preparation of that description represents most of the application’s preparation expense. The description should be drafted as if it were for a nonprovisional application – thus, the often-touted cost savings gained by filing a provisional application dissipate (for the most part).

WHAT ABOUT THE PATENT CLAIMS?

Patent claims are the numbered paragraphs at the end of a patent document that define the scope of protection afforded by that patent. Many inventors, even experienced ones, focus so much on drafting patent claims at the provisional application stage that the description of the invention may not get the attention it deserves.

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Our U.S. patent law states, in no uncertain terms: “A claim, as re-quired by subsections (b) through (e) of section 112, shall not be re-quired in a provisional application.” 35 U.S.C. § 111 (b)(2) (emphasis added). Subsections (b) through (e) of section 112 require a patent claim in a nonprovisional patent application. Shocking, isn’t it?

Again, the purpose of a provisional patent application is to obtain a filing date for a description of the invention. Since a provisional application does not become a patent, patent claims are not required at the provisional application stage.

This is not to say that patent claims are unimportant or should not be written for a provisional patent application. We believe, as most patent attorneys do, that patent claims should be written for a provisional application. One critical reason for writing a very good description of an invention is to provide “support” for the words used in the eventual patent claims of a nonprovisional patent application. If adequate “support” is not found in the provisional application, then the patent claims of the nonprovisional application may not be entitled to the benefits of the provisional application filing date. In that situation, the provisional application may not be worth much.

However, it is good form to include claims in a provisional patent application since those claims can then be used as a guide in crafting the description of the invention in that provisional application. Using the patent claims as a drafting guide ensures that there is “support” in the description of the invention for the words in the patent claims. It takes care and expertise to write that description, so “walk slowly” (and thoughtfully) when preparing a provisional patent application.

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