Why you should think twice about Provisional Patent Applications

In the past, it was typically accepted as standard practice for an inventor to write up a really quick and dirty patent application, draft up some quick drawings with the kids' crayons and send it off to the USPTO as a provisional patent application. Occasionally, the more careful inventor might send the provisional over to a patent attorney for a quick read through to clean up some of the more egregious problems.

However, the problem of enablement would inevitably crop up. Oftentimes, as an inventor would follow up their provisional patent application with a non provisional patent application within the one year time period, the two applications would look nothing like each other. More often than not, the inventor would add additional embodiments, components, pieces etc. that they thought of over the course of the elapsed year to make the invention even better.

Recent case law suggests this is problematic, to put it mildly. Now, where there is a patent based upon a non-enabling provisional patent application, that resulting patent can be null and void. The reason is that the original provisional patent application was not in conformity with the enablement requirement. As a result, any such patent would not hold up in an infringement action.

Enablement requires that the patent show all the pieces, steps, and embodiments necessary to teach one skilled in the art how to make and use the invention. Therefore, the specification and the drawings must be complete, even in provisional patent applications.

Chief amongst the stated reasons why inventors used to prefer provisionals over non provisional patent application is the idea that they can put off a large amount of the cost. Furthermore, it was thought that they can get your foot in the door a lot quicker, and then you will be patent pending a lot sooner.

The reality is that a provisional should only amount to about a 20-25% savings over a nonprovisional patent application, if done properly. The reason for this is that most of the attorney’s fees are directed to the specification and drawings.

Therefore, if you do choose to use a provisional patent application, you need to make sure you have an experienced patent attorney draft the provisional. The provisional patent application must include all of the embodiments, parts that an ordinary nonprovisional would include.

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Los Angeles Patent Attorney