What a Provisional Patent Application Actually Does
As suggested in its name, the “provisional” in provisional patent application has a connotation of temporary or conditional. A provisional application is, by nature, short-term. Something further must be done to make the temporary patent rights permanent. And that something is the filing of a nonprovisional patent application. The purpose of a provisional application, therefore, is to provide support for a later nonprovisional application.
It defeats the purpose of a provisional to file a scant disclosure that provides little to no support for a subsequent filing. The USPTO website has a helpful overview of provisional applications.
Need to file a provisional patent application with meaningful substance? Call US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to request a flat rate quote for a robust provisional patent application that will help support your subsequent nonprovisional application.
What Makes a Provisional Patent Application Well Written
If the point of a provisional is to support a later nonprovisional application, you must consider the depth and breadth of the disclosure in your provisional application.
If a picture is worth a thousand words, then perhaps the provisional application should include more visuals to help illustrate your concept. Later on, your patent attorney can argue that support for a feature was disclosed in an image even if the written description is less than detailed.
This is not an exhaustive list, but here are some representative questions to consider when you’re thinking about filing a PPA:
- What are the key features that should be explained in gory detail?
- Should illustrations or images be included to help visualize the concept and any distinguishing characteristics?
- Should alternatives and variations be disclosed?
- Any unique methods or processes to disclose in addition to the product or apparatus?
- Any particular combinations of features that are preferred?
Tradeoffs Between Provisional and Nonprovisional Applications
A direct relationship exists between the quality of a patent writing and the time spent. It is generally unrealistic to expect the same patent attorney to draft the substance of a nonprovisional application and charge a fraction of the price by calling it a “provisional” application. For a substantial reduction in cost, something has to give.
If someone wanted to sell you a “new” luxury car that normally retails for six figures for the very affordable price of $1,000, your spider sense should go way up. Common sense would dictate that you generally get what you pay for. And if you pay $1,000 for a provisional application, you should not expect to get $10,000 worth of patent drafting. Does a 90% cost savings magically appear because a patent document is called “provisional” instead of “nonprovisional”?
So if you save 90% of the cost of a nonprovisional application, what could possibly be missing in the provisional application? Are you willing to risk a later filing date for all the new subject matter that must be added to the subsequent nonprovisional application?
A False Sense of Security: Provisional Patent Apps Do Not Get Approved
There is no such thing as a provisional patent, only a provisional patent application. As an application, a provisional does not get approved.
In fact, a provisional will not even be reviewed by a USPTO examiner. If and when a nonprovisional is filed and certain details in the provisional become a critical issue, then the examiner might refer back to the provisional to see it provided sufficient support for certain claims in the nonprovisional
How a Priority Date Works Between Provisional and Nonprovisional Applications
A priority claim links a nonprovisional application to a previously filed provisional patent application. This connection gives the later-filed nonprovisional application the benefit of the earlier-filed provisional application. This benefit is called a priority date. How does the priority date benefit work?
The priority date comes into play when the examiner reviews the claims in the nonprovisional application. In particular, the examiner will search the prior art to evaluate each claim. Dates are important when determining whether a patent reference qualifies as prior art. If your claim is entitled to an earlier priority date, certain prior art references may be disqualified which means that the examiner would not be able to use those disqualified references to reject your claims.
Therefore, your provisional application must be sufficiently detailed to support the claims in your nonprovisional application. If key details are lacking, the examiner might argue that support for a particular claim is not found in the provisional application. As a result, your claims may get rejected over prior art because you could not get an earlier priority date. Later dates generally open the door for more prior art references to be cited against you.
Why a Bad Provisional Patent Application Might Be Irreparable
A deficient provisional patent application may lack certain details necessary to support a later nonprovisional. While new matter may be added to the nonprovisional, such new details will get the later filing date of the nonprovisional. As a result, you may end up with a nonprovisional where certain important details do not get the benefit of the earlier provisional filing date.
Time machines do not exist. That’s the problem with filing a scant, bare-bones provisional application. You cannot go back in time to add the details that you wish had been included. The value of a provisional patent application is only as good as the content it contains.
Don’t be penny-wise and pound-foolish. Have a provisional patent application written properly with sufficient details to support the forthcoming nonprovisional. Avoid regrets and do this at the beginning of your utility patent journey.
