Starting the process of patenting your innovation by filing a provisional patent application can be a high-value approach. However, misconceptions about what provisional applications are, and the standards applicable to them, may lead to a filing that provides no benefit at best or, at worst, actively undermines your strategy. When seeking patent protection, innovators should absolutely consult a professional patent practitioner for advice. Addressing at least the following commonly misunderstood issues with your advisor will increase the likelihood that your provisional application serves you.
Provisional Patent Applications Are Simple, DIY Affairs
The formal requirements for provisional applications are not as stringent as they are for utility patent applications. In addition, the U.S. Patent Office does not review provisional patent applications, other than to verify that you included a complete cover sheet and provided some document in addition to the cover sheet. These lower standards have led some to suggest that inventors unfamiliar with the patent system can easily prepare an application. Worse, some service providers may rely on the low standards and lack of supervision to extract payments from inventors in exchange for preparing low quality provisional patent applications.
While the formal requirements are lower, the substantive requirements relating to the quality and thoroughness of the disclosure remain the same. The statute governing provisional patent applications directly incorporates the same substantive standards for the disclosure as those applicable for utility patent applications. Filing a brief application, lacking detail about how to make and use the most important features of your innovation, is unlikely to satisfy those standards. As with any legal standard, there are nuances and interpretations a practitioner in the field will be familiar with that will not be readily apparent to a novice. While inventors are certainly capable of drafting a disclosure complying with the standards, those inexperienced with the standards may be better served by consulting an expert.
A Bad Provisional Can Be Saved by a Quality Utility Application
One benefit of a quality provisional patent application is establishing an early priority date for your adequately described invention at reasonable cost. Because the formal requirements and government fees for the provisional application are lower, the cost you can expect to pay for the provisional is also lower. Skimping on cost to the detriment of the clarity and completeness of the disclosure, however, can be fatal to your strategy.
When your provisional patent application’s disclosure is inadequate, any subject matter added to compensate in the utility conversion will not get the benefit of the early priority date of the provisional. A comparison between the sparse provisional and the thorough utility application may reveal that the invention was not yet complete, lacking essential details, at the time the provisional was filed. In such a situation, the provisional patent application may provide no benefit or may enable critical intervening prior art to undermine your utility conversion. In the rush to get your application on file, and with pressure to keep costs low, don’t skimp on your provisional patent application.
There is certainly much more to be said about provisional patent applications and strategies for their best use. However, addressing the foregoing issues with a patent professional will put you on the right track to obtaining patent protection for your innovation.
The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation.