Provisional Patent applications vs. Non Provisional Patent Applications

By: ANDREW SCHROEDER
Submitted: 2009-08-31 17:54:19
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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.

Once of the most fundamental precepts of patent law is the concept of enablement.  As part of the deal or the contract with the government for a patent, the US Government is willing to grant a 20 year monopoly to an inventor in exchange for the know-how on how to make and use that invention.  Enablement entails providing the teachings for one skilled in the art on how to make and use that invention.  As a consequence, a patent application should include all the parts or components in that invention.  It should also provide all the preferred embodiments thereof.  It should also provide how to put those pieces together if it is not obvious to one skilled in the art.  And those teachings must also be accompanied by professional drawings which clearly show how to make and use that invention.  In most cases, inventors are unaware that the patent application has to completely incorporate all of these elements.  Indeed, many provisional patent applications bear more resemblance to a fifth grade book report than to an actual patent application.

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.

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.  Unfortunately, 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.  Although the author would prefer to not get into the business of how other patent attorneys counsel with regards to provisional patent applications, this patent attorneys looks askance at the practice of "proof reading" provisional patent applications.

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.

The Los Angeles Patent Attorney

Los Angeles County Patent Attorney

The Law Office of Andrew Y. Schroeder specializes in Intellectual Property including Patents, Trademarks, and Copyrights. Andrew Schroeder is licensed to practice patent law before the United States Patent, and Trademark Office (USPTO) as well as the State Bar of California.

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