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[pro-provisional]

Another use for a provisional:
If a client wants to disclose several ideas while only paying one filing fee.  A client may have several "inventions" that he may want to protect until he determines which one(s) is going to be profitable.  A provisional allows the client to disclose all of these ideas in one application, for one fee.

I am currently drafting a provisional app for a large corporation (which is patent savvy).  I am spending considerably less time drafting this app than I typically do when drafting non-pros.  When the time comes, and if the client is still interested in obtaining a utility, I will "clean up" the application and possibly add some more claims.  Even if some new claims weren't supported in the provisional, the filing date is only lost to such new matter while it is preserved for the remainder.  

[jkudla]

You can still stick all those inventions in a utility application. If they are reasonably related to each other there is a good chance an Examiner won't stick you with a Restriction Requirement. You would additionally be free to file continuations and cut out support for other inventions if you want a cleaner document / patent for a chosen invention.

Even if your client is patent-savvy, I certainly would not want to be in your shoes if I had to explain to them that certain aspects of their invention(s) probably would not be receiving benefit of that earlier filing date because it was not supported in the provisional application - especially due to taking shortcuts in preparing the provisional.

[Penner]

I'll take a shot at a reason to file a provisional and you lawyers can tell me why this is wrong/dangerous.  For a number of years I was in the employ of a major US University as a technology manager.  After an initial disclosure  the TTO would often file a provisional inexpensively by including everything that was known about said discovery/invention (the content varied as we had everything from biotech to geophysics) .  After the Provisional was filed the investigator was free to publish while giving the TTO a year to decide if this technology was valuable enough to warrant both a Utility and/or a PCT with subsequent foriegn filings or to decide to drop it all together.  Also we were always very careful to have the utility drafted only from materials previously filed in the provisional.

This is valuable to the university because there is no reason to patent something that the researcher isn't going to follow up on (very common) and it gives them a year to probe the market.

here's where the real value comes in in my opinion.  The PI must publish (afterall that's his job)  if he publishes prior to a provisional all foreign rights are lost where as you have the one grace period on US filing.  By filing the provisional you can preserve that one year grace period on the PCT and file a PCT simultaneously with the Utility.  Even if the provisional is disallowed in the US courts and the Utility falls apart you wold still have granted foreign patents (which wouldn't have been grant otherwise obviously) that could theoretically be challanged but you would have to challenge them in every country individually ( a daunting task for any company).

[JimIvey]

That's the one variable that comes into play with provisional applications -- foreign rights (e.g., the PCT).  First, let's clarify US rights.

To protect rights in the US, the provisional is entirely superfluous in your example -- and a wasted expense/effort.  You already have the one-year grace period.  The provisional didn't buy you that.  

For rights outside the US, the provisional application must meet US standards for disclosure.  For a while, there was serious doubt whether a US provisional application sufficed as a priority document under the Paris Convention.  I think that they have been determined sufficient, at least in the most important jurisdictions.

But, to suffice as a priority document under the Paris Convention, my understanding is that the priority document must meet the requirements of patentability in the jurisdiction in which it was filed.  So, to meet this requirement, the provisional application must be sufficient under US patent law.

If throwing every document you have into a bucket and sending it into the US Patent and Trademark Office as a patent application were sufficient, I would imagine everyone would do that.  However, most practitioners consider that inadequate, or at least too risky.

Now, here's the part where you may get lucky and have enforceable rights.  As far as I know, the court that will determine the sufficiency of the US priority document under US law is the foreign court.  How accurately will they apply US law?  Hard to say.  One thing that most foreign courts may get wrong is application of the US's best mode requirement -- most other jurisdictions don't have one.  So, the court probably doesn't have much experience in applying the best mode requirement to patent disclosures.  So, you guys might squeak through with an enforceable patent overseas (or over borders here in the Americas).

I'll admit that the one feature of provisional applications is that it seems rare that they're scrutinized for sufficiency.  Legally, there's no reduced standards for sufficiency of disclosure between provisional applications and non-provisional applications.  However, in practice, the question of sufficiency of the provisional application just doesn't seem to come up that often.  However, when it does, it can have disasterous effects (see the article in linked to in an earlier post in this topic).

Having said that, I believe it is a poor practice to file a poorly drafted provisional application in hopes that nobody cares 10-20 years down the road.  

There are some things in patents that just can't be fixed after your first filing date.  It's best to get those things right before you file.

One last observation:  patents are a business tool and, like any other business tool, you can use them in any of a number of ways.  Failure to get enforceable rights for a university generally doesn't mean that you go out of business, only that you'll miss out on a particularly lucrative opportunity.  So, the penaly for getting things wrong aren't so bad -- in terms of what it means to the university.  Big established companies tend to be in a portfolio building strategy in which their patents have strength in numbers and the specific enforceability of any of them individually does't matter much.  They also can survive the uncertainty inherent in a provisional application and any patent issuing thereon.  

Where this has a more serious consequence is on businesses in which substantial importance is placed on the enforceability of a particular patent.  Examples are small companies or startups (just beginning to build a portfolio) or individuals -- anyone counting on funding at least in part based on their IP position or expecting tough competition in a competitive market.  Then, you should avoid provisional application entirely -- except for the one purpose for which they were intended: patent term shifting.  

For what it's worth, I try to treat all my applications as if my client's business existence depends on them being done right.  In many cases, it is literally true.  But I suppose not everybody needs that.

Regards.

[Penner]

 However, when it does, it can have disasterous effects (see the article in linked to in an earlier post in this topic).

.

Thanks Jim,

Am I right in concluding in that article, that the problem with their utility patent came from this sequence of events.

Disclose ...time passes... then provisional is filed...then a year later Utility is filed.

Thus when they filed their utility it had been more than a year after initial disclosure and when the provisional was nixed they also had to lose the utility based on the disclosure dates.  

It seems to me that if they filed a provisional then disclosed and filed a utility within a year even even when the provisional was disallowed they would have maintained their Utility.

[JimIvey]

I believe you're correct on the series of events.  In some cases, the provisional application is needed for patentability in the US.  In the scenario you set forth for your own hypothetical procedure, the provisional is not needed for patentability in the US but only for patentability outside the US.

So, if provisional applications are cracks in the foundation (and I believe they typically are), your US patent is more likely on solid foundation whereas your extra-US applications/patents probably have cracks in their foundations.

Whether that's a concern for you depends on how important those extra-US applications are to your business.  For some (in fact, many), having a structure with cracks in the foundation is better than no structure at all.  And, for some, having a structure free of cracks in the foundation may not be worth the expense.  And, those business value considerations may differ from one jurisdiction to another.

So, what you suggest may be a perfectly legitimate business procedure that suits the needs of your particular organization.  However, your organization should be made aware of the specific risks involved in choosing that particular procedure.  If your organization makes that choice while properly informed of the pertinent risks, costs, and benefits, then everything should be okay.

Where I tend to take issue with provisional applications is not so much that they're inherently evil but rather that some practitioners don't fully explain the risks involved.  I frequently hear inventors/companies express the view that they can get a professionally drafted provisional application for 10% or less of the cost of a non-provisional application and that it's just as good, or that their rights are just as adequately protected.  That's just not true.  You get what you pay for.

Regards.

[robertplattbell]

For the solo inventor or small company, a Provisional can be a useful tool.  Some folks are scared of what they are ignorant of, so you can't blame them for having a lack of comfort with a provisional.

To begin with, many attorneys divide up the cost of the overall application between formal and provisional by half (Yes, Viriginia, some of us have chucked the "billable hour" in the waste can and lived to tell the tale).  So the provisional can be a good way of managing cash-flow for the cash-starved startup enterprise.

If you decide to abandoned the invention after a year of promotion, you are risking a lot less capital.

Second, in most instances, inventors come up with improvements to their designs over time.  If you file a "formal" utility application, initially, this means you now have to file a C-I-P application and prosecute TWO applications instead of one.  This doubles your prosecution costs.

With a provisional, you can add the new subject matter to the formal.  You don't have the earlier filing date for the new subject matter of course (and neither would you in a C-I-P, so there is no difference there).

But instead of prosecuting two applications, you have one (unless you get a restriction requirement).

There are a lot of other uses as well.  The emergency provisional is certainly better than nothing when a client comes to you with a 24-48 hour bar-date case.

The prices quoted in this thread are a little high.  Check out Inventor's Digest magazine (www.inventorsdigest.com)  for Attorneys who really serve solo inventors and start-ups.  These large law firms are really the wrong, wrong place to go for patent work if you are a solo inventor or small company.

I have a rule of thumb for Patent Firms - never use a law firm that is bigger than your own entity.  If you are a 5-man operation, hiring a 500-attorney law firm is a bad, bad idea.  They just won't care about you as a client.  But to a small shop, you ARE the big deal.

And by all means, get a WRITTEN PRICE QUOTE up front.  The solo practitioner cannot afford to write a blank check for "billable hours" at a downtown firm.  If the Attorney will not give you a written price quote, walk away.

And to all those lawyers out there still  chained to the billable hour, jump in, the water is fine.  If you've been doing this for 10-15 years, you can price these things out like muffler jobs.  And not spending an hour every day tracking "billables" simply makes good sense.

I have sample price quotes on my website (see www.robertplattbell.com).  These need to be updated, but they give you a general idea.

But please, do not send me any work!  I am booked up well into late April at this point.  Check Inventor's Digest, though.  You might find some good leads there - and Attorneys (and Agents) who are not afraid of Provisionals.

Good luck with your project!

[JimIvey]

For the solo inventor or small company, a Provisional can be a useful tool.  Some folks are scared of what they are ignorant of, so you can't blame them for having a lack of comfort with a provisional.

I hope you're not referring to me.  I'm not ignorant of provisionals.  I was writing patent applications and popping out patents long before provisionals existed.  I know why they were created in the first place and the one and only purpose they serve.  And I know that people continue to misuse them.

To date, no one has been able to show where the law/rule is that provides for a reduced standard for sufficiency of disclosure.  If you're aware of such a rule or law, please share it with us.

To begin with, many attorneys divide up the cost of the overall application between formal and provisional by half....

That's an interesting approach.  I wouldn't do it.  It amounts to essentially a 50% down payment on a 100% job and paying the balance is optional.  

Second, in most instances, inventors come up with improvements to their designs over time.  If you file a "formal" utility application, initially, this means you now have to file a C-I-P application and prosecute TWO applications instead of one.  This doubles your prosecution costs.

The CIP in that instance is only advisable if the "new matter" is valuable as a patent.  Often, it's not.  If your first application is non-provisional, you're not limited to a one-year deadline for following up with the CIP.  Product development rarely fits the exact deadlines of patent law.  It's best to file for protection of incremental improvements based on business decisions and timing, not the coincidental deadline of another patent application.

And, if your first application is non-provisional, you have the option to protect little improvements from your disclosed embodiment as trade secrets.  On the other hand, filing a provisional then the non-provisional, you may have to update the "best mode" to be current.  I believe that's true for traditional CIPs, and I'm guessing it's true for follow-ups to provisionals.  So, you end up writing 1.5 applications when 1.0 would have sufficed.

There are a lot of other uses as well.  The emergency provisional is certainly better than nothing when a client comes to you with a 24-48 hour bar-date case.

I'll go ahead and say this one more time then leave that topic for the archives (or embelish my FAQ on the topic): Avoid emergencies by proper planning.  And, if you're really going to file some hurried pile of subject matter and hope it sticks as a patent application, don't slap the red-flag "provisional" monicker on it.

These large law firms are really the wrong, wrong place to go for patent work if you are a solo inventor or small company.

I'll have to respectfully disagree here too.  I've seen good and bad practitioners in huge firms, medium firms, small firms, and as solo practitioners.  I've also seen well-funded very small companies in which quality was more important than price.  I would urge caution in assuming too much about price or quality from the size of the firm or about budget or need from the size of the client.

I have a rule of thumb for Patent Firms - never use a law firm that is bigger than your own entity. ... to a small shop, you ARE the big deal.

I'm guessing you haven't worked for a 500-attorney firm.  It's not like that.  There are downsides to using megafirms, but I think the downsides are more along the lines of overworked attorneys and higher rates and intense pressure to puff up your hours.  A small client may be very important to a specific attorney within a large firm.

And by all means, get a WRITTEN PRICE QUOTE up front. ...  If you've been doing this for 10-15 years, you can price these things out like muffler jobs.

I wish it were that simple.  How much time a patent application takes can be influenced substantially by the client.  If the client insists on editing for style (and many do), the time into debating grammar and arguing style can more than double the time an application takes.  In addition, other clients insist on including related but distinct inventions and latest mods into the application -- ballooning the time spent in preparing it.

There's one advantage to representing primarily small/solo clients.  The odds that the patent will ever be litigated and the sufficiency of the provisional application ever determined are very low.  So, the risk of taking short cuts in preparing a patent application is minimized.

Regards.

[Access Patent Group, LLC.]

hi!  
 
It's about 5K-12K depending on the complexity of the invention.
 
sincerely,  
 
Thien Tran  
MSEE - Registered Patent Agent #47,351
http://www.accesspatentgroup.com

[jkudla]

hi!  
  
It's about 5K-12K depending on the complexity of the invention.
  
sincerely,  
  
Thien Tran  
MSEE - Registered Patent Agent #47,351
http://www.accesspatentgroup.com

hi!

I am done being sarcastic, Mr. Tran.

Your posts attempt to simplify complex situations that have often been discussed in detail by other members of this website.

Additionally, you select to answer other un-answered threads that frankly should remain un-answered. That is, some posters post rather inane questions that simply can not be answered in a general manner. Generally, the only proper response to those questions is to consult an expert in the field, for example an attorney.

I am not discouraging you from using this website. Just please exercise some restraint in your 2-sentence posts and add some more depth.

[JimIvey]

That is, some posters post rather inane questions that simply can not be answered in a general manner. Generally, the only proper response to those questions is to consult an expert in the field, for example an attorney.

I wouldn't be quite so hard on the very inexperienced new comers here.  I don't fault anyone looking for information.  However, I do wish some people would start by searching the archives for re-ocurring questions like how to protect a recipe.

As for Mr. Tran, I don't mind so much.  Yes, he has a talent for pointing out the obvious and taking intellectual shortcuts (or whitewashing entire complex issues), but that has a way of working itself out here.  People who try to genuinely provide useful information tend to stick around and people who find it too tedious tend to go elsewhere eventually.  I used to post in other places but found them less than receptive to what I had to say, so I'm not there anymore.  I didn't fit and I moved on.  People who don't seem to fit here may find those places and fit in nicely.  It all seems to work out somehow.

However, I do share your concern that this particular forum preserve its courteous, professional, and helpful culture.  I suppose I just have faith that it will survive on its own.  

Best regards.

[JSonnabend]

I agree entirely with Jonathon's sentiments.  I think it makes more sense to point out to OP's how and why Mr. Tran's posts are devoid of substance and should not be relied on, rather on telling Mr. Tran to change his approach.

As for posts like "help him file an application himself" found in another thread, those speak for themselves, I believe.

- Jeff