You get what you pay for. Case in point: provisional patent applications.
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.
For more information please contact Bob Villhard at bob@villhardpatents.com or 512-897-0399 or visit http://www.villhardpatents.com/.
hi Bob,
ReplyDeleteThank 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!
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.
ReplyDeletegreat post! i’ve always been looking for free ways to patent things..
ReplyDeleteHi Patent Price,
ReplyDeleteThanks 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,
Bob