Provisional Patent Applications: Why Avoid Them

What are Provisional Patent Applications?

• Provisional patent applications are documents filed with the U.S. Patent Office that establish a filing date for the information they contain.
• Provisional patent applications are not examined.
• There is essentially no formal style required.
• Provisional patent applications expire after 12 months. This deadline is not extendable.
• Provisional patent applications give you no rights, except one. You have a right to get the benefit of the provisional patent application’s filing date in a later filed U.S. non-provisional or an International (PCT) patent application. The non-provisional or PCT application must be filed before the provisional patent application expires. Now here is the catch: you can get the benefit of the provisional patent application’s filing date only for the same information contained in both application.

Think of provisional patent applications as 12-month placeholders for the information they contain. Within that 12-months, other applications you file containing essentially the same information, can get the benefit of the provisional patent application’s filing date.

The most important point I want you to take away from this article is this:

Provisional patent applications only have the potential to protect what they disclose. Nothing more. Period. End of story.

The following chart summarizes the differences between provisional patent applications and regular non-provisional patent applications.

Provisional Patent Applications:
The Myth

Here is typical scenario.

A product manager in your company comes up with a brilliant idea. Your engineering department quickly designs and builds a working prototype. You show the prototype to a select group of customers under an NDA. They love it. A trade show is coming in a month. Your sales department is very excited and wants to show the prototype. You go to your patent attorney or patent agent and say that you need to file a quick and dirty provisional patent application. Your engineers quickly put together some documentation, drawings, and sketches for your patent attorney. He or she files the provisional patent application. After you get market feedback, you plan on tweaking the design and file a “real” patent application. Sound’s familiar?

I provide you with this example because it exposes two dangerous assumptions:

• First false assumption. Provisional patent applications protect you while you tweak and develop your product.
• Second false assumption. A provisional application saves you money.

Busting the Myth:

The fact is that provisional patent applications only have the potential to protect what they disclose. Nothing more. Period.

Any new idea or improvement your development team comes up after you file the provisional patent application gets absolutely no protection from that provisional patent application. If it turns out that new idea or improvement is the “secret sauce,” the provisional patent application you filed earlier will not help you.

What’s worse, there is an assumption and expectation that provisional applications are inexpensive. Because of this, provisional applications generally cannot get the proper care, attention, and analysis required of a quality patent application.

A poorly written or ill-conceived provisional application cannot magically make a solid foundation for a strong and enforceable non-provisional patent application.

Unfortunately, there is no magic here. While it is possible to write an excellent provisional patent application, it is nearly as much work as a well-written non-provisional patent application. Therefore, any savings in time and money afforded to a non-provisional application would be lost.

For example, in a recent case in the federal court of appeals, Dynamic Drinkware LLC vs National Graphics (Federal Circuit 2015), the court, ruling against Dynamic Drinkware affirmed this notion stating, “a provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.”

Provisional Patent Applications
Can Cost You More Money

In the worst-case scenario, a “quick and dirty” provisional application with no formal style and informal drawings is typically no better than invention disclosure notes. In this case, your patent agent or patent attorney will have to put as much effort into their non-provisional application as if they started from scratch. Worse, yet, to get the full benefit of the provisional patent application’s filing date your patent attorney or patent agent will be limited to the provisional patent application’s original disclosure. The combined total will cost you more than just a non-provisional patent application written from scratch.

Best case scenario, the provisional application is well thought-out and is carefully crafted as if it were a finished non-provisional application except the drawings are informal and claims are omitted. In that scenario, depending on how your patent attorney or agent works, the combined total may just be marginally more than filing a non-provisional patent application from scratch.

But in both scenarios, there is a hidden, and significant cost. Filing the provisional patent application has delayed examination. If your market is highly competitive, you have lost the competitive advantage of having a issued patent sooner.

The Core Issue:

Early in my career in new product development, one of the senior techs I worked with was fond of saying:

“never enough time to do it right, always enough time to do it over.”

In my experience, one of the core reasons companies choose to file provisional patent applications is because they have not built a patent protection strategy into their product development process. Provisional patent applications can become a procrastination tool or a tool of desperation that lures one into a false sense of security.

Like new product development, the cost of mistakes and miss-steps can be back loaded. Small mistakes upfront can be significantly more costly down the road. An ill-conceived provisional patent application can lock your patent attorney or patent agent into a less than ideal non-provisional patent application. This can lead to the unpleasant scenario of missing out on your core inventive concept or worse, having a patent found to be unenforceable patent after costly litigation.

Best Practices

Instead of filing provisional patent applications, I suggest the following:

• Build patent protection into your product development cycle and product development budget.
• Train your staff to recognize inventive concepts early.
• Do a patent search of each inventive concept upfront. Here is an article on the essentials of patent searches that you may find helpful.
• Depending on the outcome of the patent search, file a non-provisional patent application.