Sunday, March 20, 2011

Provisional Patent Applications: Cheap “Protection” or Dead Man’s Curve?

You get what you pay for.  Case in point: provisional patent applications (with one notable exception related to the America Invents Act (AIA)). 
U.S. law allows inventors to file “provisional” patent applications for a modest fee.  Since the costs for provisional applications beat the costs for regular patent applications by quite a bit, many entrepreneurs speed down this fork in the road assuming that they are “protected” (more on this later) and that they can easily convert their provisional applications into regular applications before the one year deadline for doing so.   
Here is the catch.  The claims of a patent application should define the invention while the remainder of the application should support those claims.  Provisional applications however rarely contain claims.  It should surprise no one then that provisional applications often gloss over or skip important points (in part) because these applications fail to define the invention with well-crafted sets of claims. 
Moreover, instead of supporting the claims, provisional applications often restrict what protection might subsequently be available.  For instance, provisional applications usually include large quantities of “patent swearing.”  Many of these English words have dual meanings.  In everyday, technical, and/or contractual language these terms convey what ought to be done to create a product (or service).  But, when read by a patent attorney (working for a competitor) these terms take on different legal meanings which can allow use of the idea potentially without infringement.  Worse still, even well-drafted regular applications which arise from poorly drafted provisional applications can legally inherit the flaws of the provisional applications. 
This is not to say never file a provisional application.  If you find yourself up against the guard rail of an offer-for-sale or public disclosure deadline (see previous postings) then filing a provisional application can make sense.  If the intent is to obtain cheap protection, though, entrepreneurs risk skidding over the cliff at Deadman’s Curve. 

Of course, the AIA threw in a new wrinkle.  Time is now of the essence in filing patent applications due to the first-to-file provisions of the AIA.  Because of this alone, and despite their shortcomings, provisional patent applications serve to get an early filing date and should be considered as soon as an entrepreneur realizes that an idea has commercial potential.  But, to plug the holes in them, entrepreneurs should also consider having a regular, non-provisional, patent application prepared and filed within a reasonable time following the filing of their provisional application.  Otherwise, the gaps in their provisional applications will cause those provisional applications to be little better then weak guard rails on dead man's curve.
For more information please contact Bob Villhard at or 512-897-0399 or visit