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[reddart]

I know that in a provisional patent, you are not required to state claims, but would it be recommended to include claims if you are sure about what you want to claim? I am planning to write and file a provisional patent as complete as possible, as I want the specific claims disclosed clearly so there is no question as to what the invention covers.

Or, is it better to not have claims, so the broader idea is covered (until filing a non-provisional patent, or the provisional patent expires)?

[Wiscagent]

"Or, is it better to not have claims [in a provisional application], so the broader idea is covered ..."
A provisional application doesn't "cover" anything, it just establishes a priority date for the disclosure.

The advantages to filing a provisional patent application, in contrast to a regular patent application, are that (i) the applicant less money in PTO fees up-front, and (ii) a patent claiming priority to the provisional will expire later than if the applicant immediately filed a regular application.

The disadvantages to filing a provisional patent application, assuming that a regular patent application claiming priority to the provisional is filed, are that (i) the applicant pays more money in total PTO fees, and (ii) a patent claiming priority to the provisional will be granted later than if the applicant immediately filed a regular application.

If the original application (regular or provisional) supports new or amended claims, then the new claims can be added or the original claims changed at the appropriate stage of examination.  If the original application (regular or provisional) does not support the new claims, then the new or amended claims should be rejected.  Thus, omitting claims in the provisional application does not provide any added flexibility in claiming strategy relative to filing a regular application.  (Except that the delay in examining the provisional application, relative to the regular application, potentially could provide an advantage.)

[reddart]

OK, so it looks like I should include claims then.

Thanks.

[bartmans]

If you are writing a complete specification + claims, it would be adviseable to file the application in a country/region that could provide you with a novelty search during teh first year.
Filing a US provisional only establishes a priority date, as said earlier: you will get no information on the possible patentability of your invention.
If you would like to have an early US filing data, i would advise to file a PCT application. The initial costs are higher, but withina year from filing you will have a novelty search and a written opinion on the patentability of your claims. This can help you decide whether your invention would be worthwhile to continue the patenting process, and it will enable you to adapt the specification and/or claims to the cited prior art to be able to file a more robust application.

[bleedingpen]

I always write at least 1 IC and a couple of DC for each provisional.  This is the only way that I know of to nail down the claim terms that I will need to use consistently in the specification.  This also allows me to fetch out possible patentable features that can then be further described in the specification. 

[ChrisWhewell]

I know that in a provisional patent, you are not required to state claims, but would it be recommended to include claims if you are sure about what you want to claim? I am planning to write and file a provisional patent as complete as possible, as I want the specific claims disclosed clearly so there is no question as to what the invention covers.

Or, is it better to not have claims, so the broader idea is covered (until filing a non-provisional patent, or the provisional patent expires)?

If claims define inventorship and the application that is filed has no claims in it, then I think it would be improper to name anyone as the inventor.   Stated another way, I'd never put an inventor's name on a patent application unless it included at least one claim.

Provisional applications are GREAT when you have a really sucky invention that isn't worth a dime, because then, one saves money on the preparation of what are often fatally-defective specs, and filing fees.  They can be good for good inventions too.   Everybody benefits !!

[MYK]

If claims define inventorship and the application that is filed has no claims in it, then I think it would be improper to name anyone as the inventor.   Stated another way, I'd never put an inventor's name on a patent application unless it included at least one claim.

Jim Ivey and others have made good points in the past about why a provisional should always include at least one claim.  I know you're just being silly there, but IMHO anyone who has contributed to the application's claimable material should be named as an inventor on the provisional.  That way, when the final claims are drafted and a nonprovisional is submitted, there won't be any issues about why someone was named on the NPA but not on the PPA.

Provisional applications are GREAT when you have a really sucky invention that isn't worth a dime, because then, one saves money on the preparation of what are often fatally-defective specs, and filing fees.  They can be good for good inventions too.   Everybody benefits !!

Someone clearly needs his morning prune juice. 

Right now, I'm looking at submitting at least four provisionals related to a single complex mess of hot cross inventions, because there's a race to the office on one core concept, and there are multiple main inventions that leverage off the first.  Talk about a royal pain in the bleep.    Fortunately, while some people have their morning prune juice to look forward to, I have my morning amphetamines. 

[ChrisWhewell]

Seriously, I'd never file any patent application without a claim.  Once there's a claim, then there's a claimed invention and it becomes possible to determine who contributed to it.   With no claim, although permissible, how can any person be alleged to be inventor ?   What did they invent ?  A disclosure ?    I don't mean to start a debate, rather, only relate my personal sentiments.   Provisionals are good when used correctly - I like to use claiming styles that are permissible in the UK and other places, then later file a PCT based on the provisional.  I ponder the use of omnibus claims also.   Although not a permissible format in many places, they are claims nevertheless, and nobody is going to object to one in a provisional.  "Any and all novel and non-obvious subject matter present in the foregoing that relates to the use of X in combination with Y and Z as described, including all functional equivalents known in the art, whereby J is caused to result."  I've never done that, but dream of such things typically only just before my morning prunes when my blood sugar is at its lowest.

[JimIvey]

Legally speaking, I believe there is one and only one purpose served by a provisional application -- delaying issuance and expiration by up to one year.  All other benefits are illusory.  And, if you really want to delay issuance and expiration, the PCT is a better route.

However, for this discussion, I'd point out that getting inventorship correct really only matters at issuance.  I don't believe inventorship as named on a provisional application matters all that much, assuming reasonable effort to name contributors of the disclosed matter.

Regards.

[ChrisWhewell]

The canons of practice expressly forbid practitioners to put forth any paper or action merely for the purpose of delay.....
then June 6, 1995 rolls around and by alleged treaty, the congress implements these provisional applications, which as you rightly point out, are in legal effect a source of delay.   Its not tenable but is funny to think, that any practitioner who knows that provisionals are a source of delay and who knowingly files one for a client (how else could one file it, unknowingly
?), is violating the canons of practice.

[JimIvey]

The canons of practice expressly forbid practitioners to put forth any paper or action merely for the purpose of delay.....
then June 6, 1995 rolls around and by alleged treaty, the congress implements these provisional applications, which as you rightly point out, are in legal effect a source of delay.   Its not tenable but is funny to think, that any practitioner who knows that provisionals are a source of delay and who knowingly files one for a client (how else could one file it, unknowingly?), is violating the canons of practice.

Funny.  I suppose the same could be said for extensions of time.

For what it's worth, I don't think anyone should be terribly worried about that issue.  As I recall, Lemelson inadvertently introduced the legal community to the notion of "prosecutorial laches" without raising the ire of filing papers for the purpose of delay.  If Lemelson didn't raise that issue, I don't think anyone else will inadvertently.

Regards.

[BobRoberts]

I think that provisionals have their place, especially for clients fighting a bar date.  Disclose at least what you will (or previously) made public, to protect that subject matter.  Make sure the drawings are detailed.

I do try to include at least one claim at the end (albiet sometimes a broad claim).  Reaching back in memory, I seem to recall a situation where the Provisional Application needs at least one claim for a PCt application to properly claim priority to it?  It's late, and I'm tired, so I may just be dreaming that however.

   

[JimIvey]

I think that provisionals have their place, especially for clients fighting a bar date.  Disclose at least what you will (or previously) made public, to protect that subject matter.  Make sure the drawings are detailed.

That would make sense if the determination of "enablement" was the same for prior art and for the specification of a patent application.  If so, the publication would be not enabling or the provisional specification would be enabling.  All bases covered.

However, the two standards for sufficiency are not one and the same.  At the very least, the publication can suggest things to those skilled in the art that makes the invention obvious and a specification is to teach, not hint, so the same specification would likely be inadequate.  And, as applied in reality, the standards for sufficiency of disclosure are very different for prior art and for a specification supporting claims. 

Section 112, first paragraph, is exactly the same for provisional applications and real applications.  In preparing and filing applications properly, you should not file a provisional application that you would think is inadequate under Section 112, par. 1, as a non-provisional application.

Regards.

[BobRoberts]

Understood and agreed Jim.. Looking at it, I worded my answer slopily.

[DogDayPM 9er9er9er]

Looking at it, I worded my answer slopily.

Steep and slippery indeed!