Isn’t a cheap provisional patent application better than nothing?

Provisional patent applications serve a useful purpose. When written properly, a provisional offers patent-pending status for one year. This buys time for the applicant to secure funding, make money or pursue any number of business plans that may help justify and pay for a nonprovisional patent application. The problem lies not in the idea of a provisional, but in the practical realities of how provisional applications are written and filed. risks of a deficient disclosure. When you pay for a very cheap provisional patent application, the risk is that insufficient disclosures in your filing may cause harm that you will not be able to fix.

What are the risks of a bare-bones provisional patent application?

A provisional application offers flexibility in how you describe and show your invention. You do not need to adhere to the very rigid format of a nonprovisional application. Your written description does not need to follow any particular format. You may include visuals such as photos, drawings, diagrams, flowcharts, hand sketches, and all sorts of disclosures that combine text with graphics. Claims are not required in a provisional patent application. There is no requirement to submit known prior art since this obligation applies only to nonprovisional patent applications.

The high degree of flexibility in a provisional, however, can also become a downside. There is no minimum level of disclosure that must be met in order for a provisional to be accepted. In fact, there is no such thing as an acceptance or allowance of a provisional application. Nobody at the USPTO will tell you whether the disclosure in your provisional is sufficient unless it becomes an issue in your subsequent nonprovisional application. Anyone can file a provisional application without receiving any indication that something is wrong or missing. You can slap a cover sheet on a piece of paper with chicken scratches, and file that as a provisional application.

What gives value to a provisional patent application is the level of detail in describing and showing the invention. A well prepared provisional application would ideally have several visuals such as photos, drawings, flowcharts, etc. A written description should accompany the visuals and explain in gory detail what is shown, especially with respect to the unique features. Not much needs to be said about known technology other than to provide helpful background. The emphasis should be on expanding the core unique features of the invention. Alternatives and variations should also be described.

What is the harm caused by a short provisional patent application?

A cheap provisional patent application carries the risk of insufficient disclosure. The potential damage caused by a very brief provisional application would be incurred after the filing date. It is what happens after the provisional is filed that could hurt you. By the time you realize your provisional is scant, it may be too late to correct the situation.

Say you file your provisional application thinking that you’re covered and protected for one year. In the meantime, you start disclosing your invention without any NDA’s or confidentiality obligations. The problem arises when you begin publicly disclosing features of your invention that are not sufficiently covered in your provisional application. This will preclude you from obtaining foreign patents covering these missing features which you have already publicly disclosed. You also risk losing US patent rights on such missing features if you fail to file a timely (new) application to include the new subject matter.

Suppose you keep your invention confidential even after the provisional filing date. You still have the risk that others may file a patent application covering features missing in your provisional filing. You could end up losing the race to the Patent Office because you were not first to file for certain features lacking in your provisional application.

So a false assurance of protection can lead provisional filers to think that they have patent-pending status when, in fact, their provisional applications omit necessary information to support the forthcoming nonprovisional application.

Can missing details be added to a previously filed provisional application?

No, you cannot go back in time to add missing details to a previously filed provisional application. You may add new details to a subsequent nonprovisional application or to a second provisional application, but the new details will get a later filing date. That is the general rule of patent priority datesnewly added content gets the filing date of whenever it was first included in a patent filing.

Why is the damage irreparable?

Timing is critical in reserving patent rights. Patent laws in the US and foreign countries have specific deadlines by which inventors must apply for patent protection. If certain important details are left out of your provisional application, the omission may block you from obtaining US and foreign patents covering the missing details.

In other words, you cannot add new content and still keep the original filing date of your provisional application. Any new content that is filed with the USPTO at a later time will get a later filing date. And a later filing date means that you must contend with more potential prior art references that may be cited against you.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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