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[mowpar]

OK

[JimIvey]

There aren't many types of patents, and most are "utility" patents are the most common.  When people refer to "patents" without classification, utility patents are assumed.

Other patent types include plant patents and design patents.

Regards.

[JimIvey]

There is no provisional patent.  There is only a provisional application for a utility patent.  A provisional application is, as its name suggests, incomplete and not whole -- as in, this is an application for a patent provided something else happens.  That something else is the filing of a real patent application -- that is not provisional, not contingent -- for the same invention.

So, there are generally two ways to apply for a utility patent.

First, file a real (not provisional) patent application.

Second, file a provisional patent application then file a real (not provisional) patent application no more than one year later.

Notice that the real application is required in both ways and that the provisional application is an extra step.  For some people, that extra step is worthwhile.  For most, it's not.

Regards.

[Yak]

I had noticed on another post, that a person was told, you probably be better off getting a utility patent and just by pass the provisional application,  Since I did not know what a utility patent was, I was encapable of knowing, whether that would be  what I would want to do to.

I am wanting to be able to show my proto type, to maybe interested tool companies.  As fast as I can, with as little expense that I can. 

The market is already there in the field I work.  And the need is there, just need to let the campany
know about the product.

I have a number of clients who end up choosing to file a provisional patent application as a first step, although as Jim noted it is not for everyone.  For those who do start with a provisional, it is typically for the following reasons:
1.  They want to obtain the "patent pending" at an initial lower cost.  Our fees are less to prepare and file a provisional and the filing fee is less as well.  However, the applicant is made aware that the filing for the the utility application will still be required so it is more money in fees in the long run. We only charge the difference between a provisional application and a utility application if the client chooses to have us continue the application, so they do not end up paying more legal fees taking this path. I do not know if this is how other places operate.
[sorry I accidentally posted the response before I was finished]
2.  The applicant wants to obtain the "patent pending" quicker.  Since we do not draft a complete claim set for the provisional application, it can get filed much faster.  Inventor caveat, make sure the disclosure for the provisional application is full and complete. 
3.  The applicant wants to promote, test the market, and try to sell the invention before making the investment for a complete "real" utility application. 
4.  Sometimes the inventor gets feedback through his marketing efforts which is used to improve the invention design/function during that provisional year and those improvements can more easily be incorporated into the utility application.  Although, those improvements which were not disclosed in the provisional will not benefit from the filing date of the provisional.

Gene Quinn has a pretty informative blog, IPWatchdog.  One of the pages has a pretty good overview of patents: http://www.ipwatchdog.com/patent/.

[bleedingpen]

1.  They want to obtain the "patent pending" at an initial lower cost.  Our fees are less to prepare and file a provisional and the filing fee is less as well.  However, the applicant is made aware that the filing for the the utility application will still be required so it is more money in fees in the long run. We only charge the difference between a provisional application and a utility application if the client chooses to have us continue the application, so they do not end up paying more legal fees taking this path. I do not know if this is how other places operate.

I know several firms that operate under this principle, e.g. if a utility patent would cost 8k in legal fees and you file a provisional for 2k, then they will file the utility for 6k.

Personally, I run from this model as much as possible.  It always takes much more of the firm's time to do the provisional-utility route as opposed to a straight up utility, so your profit margins are reduced if you don't charge more for the provisional-utility route.  You have extra docketing, extra reminder letters, the inventor will invariably come up with improvements that must be incorporated into the utility, there is two sets of reviews (the review of the prov and the review of the utility), and a proper written application needs the claims written first and then the spec, any other way results in increased attorney time and since provisionals usually don't include complete claim sets, well you get a crappy spec.

Additionally, I charge more for the provisional-utility route to give clients an incentive to go straight to the utility. 

/end run on rant/

[Yak]

1.  They want to obtain the "patent pending" at an initial lower cost.  Our fees are less to prepare and file a provisional and the filing fee is less as well.  However, the applicant is made aware that the filing for the the utility application will still be required so it is more money in fees in the long run. We only charge the difference between a provisional application and a utility application if the client chooses to have us continue the application, so they do not end up paying more legal fees taking this path. I do not know if this is how other places operate.

I know several firms that operate under this principle, e.g. if a utility patent would cost 8k in legal fees and you file a provisional for 2k, then they will file the utility for 6k.

Personally, I run from this model as much as possible.  It always takes much more of the firm's time to do the provisional-utility route as opposed to a straight up utility, so your profit margins are reduced if you don't charge more for the provisional-utility route.  You have extra docketing, extra reminder letters, the inventor will invariably come up with improvements that must be incorporated into the utility, there is two sets of reviews (the review of the prov and the review of the utility), and a proper written application needs the claims written first and then the spec, any other way results in increased attorney time and since provisionals usually don't include complete claim sets, well you get a crappy spec.

Additionally, I charge more for the provisional-utility route to give clients an incentive to go straight to the utility. 

/end run on rant/

I agree with that.  I have philosophical differences on mind with my colleagues and superiors on that subject.  That just happens to be the model that is in place here now. 

[JimIvey]

I know several firms that operate under this principle, e.g. if a utility patent would cost 8k in legal fees and you file a provisional for 2k, then they will file the utility for 6k.

As I've noted many times in here, both provisional and real applications must meet the same exact standards -- 35 USC 112, paragraph 1 -- for the claims you ultimate want to include.  For me, meeting that standard requires about 80%-90% of the effort to write the complete application.  To really do it properly, it should require exactly the same effort for both provisional and real applications.

So, charging one-third for the same job means at least one of two things is going on:  1. The provisional application is not being prepared so as to meet the requirements of law.  2.  The practitioner/firm is simply charging less for the same work.

I don't do either of those. 

Regards.

[bleedingpen]

I know several firms that operate under this principle, e.g. if a utility patent would cost 8k in legal fees and you file a provisional for 2k, then they will file the utility for 6k.

As I've noted many times in here, both provisional and real applications must meet the same exact standards -- 35 USC 112, paragraph 1 -- for the claims you ultimate want to include.  For me, meeting that standard requires about 80%-90% of the effort to write the complete application.  To really do it properly, it should require exactly the same effort for both provisional and real applications.

So, charging one-third for the same job means at least one of two things is going on:  1. The provisional application is not being prepared so as to meet the requirements of law.  2.  The practitioner/firm is simply charging less for the same work.

I don't do either of those. 

Regards.

In most cases, it would be the first. 

[blakesq]

I don't think you are required (or that it is necessary) to have all possible claims that are written for a non-provisional application, be supported by the provisional application.  Rather, when I try to save my client money, I write the provisional such that the it will provide 112 support for at least one claim that will capture the invention.  This claim may be less broad than many of the claims in the subsequent non-provisional, but in order to save money for the client, I spend less time working out various ways to broaden the scope of protection provided by claims that may be supported by the disclosure in a provisional app. 


So with respect to your post, i think there is a 3rd option:  "3.  The practitioner/firm is preparing a provisional application that meets minimal requirements of the law, by supporting a relatively narrow claim." 

I know several firms that operate under this principle, e.g. if a utility patent would cost 8k in legal fees and you file a provisional for 2k, then they will file the utility for 6k.

As I've noted many times in here, both provisional and real applications must meet the same exact standards -- 35 USC 112, paragraph 1 -- for the claims you ultimate want to include.  For me, meeting that standard requires about 80%-90% of the effort to write the complete application.  To really do it properly, it should require exactly the same effort for both provisional and real applications.

So, charging one-third for the same job means at least one of two things is going on:  1. The provisional application is not being prepared so as to meet the requirements of law.  2.  The practitioner/firm is simply charging less for the same work.

I don't do either of those. 

Regards.

[JimIvey]

So with respect to your post, i think there is a 3rd option:  "3.  The practitioner/firm is preparing a provisional application that meets minimal requirements of the law, by supporting a relatively narrow claim." 

That's fine if, within the real application, you don't need the priority date of the PPA for other claims.  If you really do need the priority date for the other claims, you've essentially only shot yourself in one foot, but not both.  Small comfort, in my opinion.

"Minimal requirements of the law" is a tough one.  I'm not entirely sure how Section 112 will be measured in 10-20 years, so I over-meet Section 112 by a margin of safety (at least I try to as best I can).  But I don't just fill up applications with additional junk just for fun; I believe it to be required (or potentially required) by Section 112.  I see no justification in the law to do less with a provisional application.

The bottom line is that provisional applications were never intended for that purpose (and the purposes for which they're most often used) and don't serve it very well.

Regards.

[blakesq]

It's a huge comfort.  Don't you remember, Bruce Willis was able to take on a whole team of European Terrorists with only one foot in Die Hard!

So with respect to your post, i think there is a 3rd option:  "3.  The practitioner/firm is preparing a provisional application that meets minimal requirements of the law, by supporting a relatively narrow claim." 

snip
  If you really do need the priority date for the other claims, you've essentially only shot yourself in one foot, but not both.  Small comfort, in my opinion.
snip