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


  1. hi Bob,

    Thank you for the posts. I am not sure I understand what "patent swearing" is. Could you explain a little more? Also, I think you are saying that a provisional application should include claims, or did I read that wrong? Thank you so much for your information. I am considering filing a provisional application and have been researching it like crazy!

  2. Patent attorneys refer to many types of mistakes made in patent applications (by other patent attorneys -- even experienced ones, patent agents, newbies, and especially pro se applicants) as patent swearing. Actually there is an almost endless variety of these patent-swear words, phrases, and other things that can be misinterpreted. Patent preparation and prosecution (preparing, filing, and pursuing a patent application) is somewhat like being arrested, anything you say, can and will be held against you -- particularly if your application issues as a patent that ends up being litigated.

  3. great post! i’ve always been looking for free ways to patent things..

  4. Hi Patent Price,

    Thanks for your comments and enthusiasm for patents. I would like to make sure that I am clear about two points. First, a provisional patent application is just a patent application and, in most cases, not much of one at that. You can't enforce a provisional patent application and it gives you no coverage, protection, etc. All it does it document the information in it (warts and all) as of its filing (priority) date.

    Second, even provisional patent applications have a cost. At the least you have to pay a filing fee and many people pay an attorney to handle the filing. In addition, the cost of the errors and omissions in provisional applications can be beyond calculation.

    Thanks again,


  5. Thanks for this Perfect blog of provisional patent application and providing us the information about legal services.

  6. Thanks timetopatent. One of my missions is to educate the entrepreneurial community. I did check out your website and like the straightforward information you have available there. Bob

  7. Hi Bob,

    Thank you for the post on provisional patent application!

    I would like to debate a few points... I belong to a Inventors Club and I see countless retired couples coming with an idea or people like myself, who are great at what we do but first time inventors. Being that most new inventors should or are looking to license their idea, I find the Provisional the best and most affordable path to market the invention. Once you file a Provisional you can claim "Patent-Pending", this give you leverage to license the invention without the cost of a full Patent. Further to this, the cost of filing a Patent is so significant, that it doesn't warrant the financial risk to receive a filed "Patent-Pending" status, only to find out that the market doesn't want the idea or you can't license it because of many other reasons. Again, a Provisional provides you this major opportunity at a fraction of the cost.

    Additionally, a Provisional keep me from having umpteen NDAs, Non-competes, Non-circumvents, etc on file with every manufacturer, customer, user, even relative, etc that I speak to about my idea. A Provisional is like a Worldwide NDA, yes? Now with all of that said, I whole heartily agree that a poorly drafted Provisional isn't good and is a greatest concern. With that said, I've spoke with attorneys that want to charge me $2,500-3,000 for a Provisional and that's not including filing fees, drawings, etc!!??! If someone had $3k to throw at their idea, I suggest they put it toward more important items like: Prototype (verify it works), Marketing (the snuggie wasn't patented but marketed!!), etc.

    With all of this said, do you think that there is a balance between Provisional and Patent with putting claims in the Provisional?


  8. Charles,

    It is true that you can claim "patent pending" as soon as you file a provisional application. But, it only gives you a year to do what ever it is that you are going to do. Whether you could find a licensing deal -- much less close it -- within a year is a stretch. See my most recent post about needing (from a practical, real-world perspective) to start a business to get some other party interested in buying into your idea. They usually won't buy in unless you demonstrate that your serious about it (at least that's what I have observed in +12 years in this business).

    You are right though that the year gives you some time to assess the market. But, again, you have to be pretty active to get that done in a year IMHO.

    As to the NDA angle, I would not rely on a provisional application to cover your tracks. For one thing, the other party might not realize that you think the disclosure is confidential. For another thing, the provisional might have omissions in it and revealing that omitted information could be bad news.

    Next, the $2500 price tag you've been quoted for a provisional application does seem high. I and most IP Attorneys I know only ask for $1000 to $1500 for a file-as-is provisional application.

    You are right that your investment in IP should be considered in conjunction with the other investments that you are making in the idea (or better yet business). And on that note, the thousands of dollars you're likely to spend on a full non provisional application will pale in comparison to many of your other investments (R&D, marketing, sales, saleries, etc.)

    Finally, my recommendation for those serious about making money off of an idea is to assume that you'll need to build a business around it. You will also want to protect your market with the right blend of IP assets (including non provisional patent applications if applicable).