By Jon H. Muskin

Patents2As a patent attorney, I cringe every time I hear someone give questionable advice about provisional patent applications.

The advisers are usually those without law degrees. Their recommendations often include filing a self-prepared provisional application and claiming this method benefits the filer in all kinds of ways.

The filing fee is a mere $110, and having a provisional means the filer has immediate “patent-pending” status, they’re told. Moreover, a provisional patent application or PPA buys a filer one year to market the invention. This means the filer has an entire year before having to pay a patent attorney thousands of dollars to have a full utility application prepared.

In reality, there is no free lunch. A quick and easy provisional application filing may be appropriate in some circumstances, but in other situations it is simply a bad idea. Following lousy advice can put inventors at risk of being inadequately protected and jeopardize rights to their invention.

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All patent applications, including PPAs, are subject to three important statutory requirements under 35 U.S.C. § 112. A patent application must contain:

  1. An adequate written description of the invention
  2. Enable one of ordinary skill in the art to make and use the invention, and
  3. Must set forth the best mode of practicing the invention contemplated by the inventor upon filing.

If any one of these requirements is not met, the application is inadequate and will not support a filing date for the claimed invention.

Many self-prepared provisional applications fall short from meeting the requirements of 35 U.S.C. § 112, as well as other statutory requirements. That’s why it can cost a lot of money to hire patent attorneys. Those skilled in their jobs know what it takes to meet USPTO requirements. Skilled patent attorneys are trained to write patent applications that contain all the necessary details and what features can be claimed.

If you file a provisional application that does not meet statutory requirements, it is tantamount to not having filed anything at all.

Suppose “Bob” invents a new type of sail for a sailboat and uses his sail at a beach in public view to show it to his friends on Jan. 1, 2009.

He files an inadequate provisional application on Feb. 1, 2009.

On January 30, 2010, Bob files a utility application claiming priority to the provisional application.

It should come as no surprise that Bob’s utility application is rejected and he loses all rights to his invention. Bob publicly used his invention on Jan. 1, 2009. A patent application must be filed no later than one year after a public use or disclosure. Because Bob’s provisional application was inadequate, its filing date becomes irrelevant, and the utility application was filed too late.

Or take “Jane,” who invents an improved microwave oven, but never builds a prototype. She files an inadequate provisional application on Jan. 1, 2009.

On Dec. 1, 2009, she has a patent attorney file a competent utility application claiming priority to the provisional application. During examination of Jane’s application, the examiner rejects the application based on a patent application publication filed by someone else on Feb.1, 2009 which describes the same invention.

The filing date of Jane’s provisional application cannot be used because the provisional application was inadequate from the get-go. Jane’s only hope would be an expensive interference proceeding to establish invention priority, which she would likely lose based on these facts.

Despite the pitfalls, there are some circumstances where filing a quick PPA may make sense. If money or time is limited (when isn’t it?), you can file a quick provisional application to simply get something on file and hope that it meets all of the statutory requirements. A quick provisional application also can be used as evidence of conception of an invention and may serve as blocking prior art to subsequent applications other inventors have filed.

Regardless, you should always discuss the benefits and disadvantages of filing a quick provisional application with a patent attorney – it’s the best way to avoid costly mistakes.