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[avi hayon]

I am preparing now (myself) a provisional patent application. A patent attorney once told me I need to make the application "light" enough so that when a professional patent attorney later files the regular application based on the provisional application I wrote he won't be too tied or restricted by it. Of course, it also shouldn't be too general for it will be disqualified.

How do I find this proper balance?

How much can the patent attorney chnge the PPA when preparing the regular application?

Is it wise to write more than one claim in a PPA?

avi

[W]

Advice (echoed by 99% of this board): do not file a provisional application. It's useless (aside from establishing an earlier filing date).

Instead, spend time on the regular application. It's the only thing that counts.

-W

[eric stasik]

I am preparing now (myself) a provisional patent application. A patent attorney once told me I need to make the application "light" enough so that when a professional patent attorney later files the regular application based on the provisional application I wrote he won't be too tied or restricted by it. Of course, it also shouldn't be too general for it will be disqualified.

How do I find this proper balance?

Write about 50 applications for patent under the mentoring of an experienced patent attorney. Sorry Mr. Hayon, I don't think there are any shortcuts.  

How much can the patent attorney chnge the PPA when preparing the regular application?

Well the problem is "new matter." Anything that the attorney adds will have the prima facie filing date of the regular application. If what the attorney must add is crucial to what you claim, then you won't be able to claim the earlier filing date of the provisional.

Is it wise to write more than one claim in a PPA?

I would say yes, especially if you add method claims that are self-enabling. The more detail you add, the better off you'll be.

W is correct that the general advise of this board (and the professional community) is against filing provisional applications.

To be more precise, patents are among the most complex legal documents ever devised. If you do not have substantial experience in drafting and close acquaintance with the patent law,  you will likely create a document so flawed that it will be unenforceable.

That being said, there is a substantial difference in filing costs between filing an application as a provisional application, or as a regular application. I see nothing wrong at all with filing a "regular" application provisionally in order to save a few grand. Test the waters for a year and see if makes sense to make further investments.

Do youself a favor, draft an application as fully and and completely as you can, and then pay a qualified patent attorney to re-write it.

File this as a provisional application to save money on the filing fees (you also don't have to file a declaration I believe which also saves you money).

Invest time and money into marketing your idea so you will be able to decide within one year's time if you should make further investments. If you choose to go ahead, you only need to file some formal papers and pay some fees to the USPTO and you're good to go.

Good Luck,

eric stasik

[JimIvey]

I think you got bad advice.  Perhaps there's a reason the attorney gave you that advice, but I can't think of any way in which following that advice can put you in a better situation that you would be by doing nothing.  Now, that doesn't mean doing nothing will make you any better (in fact, it can do substantial harm to your IP rights), it just means that doing your own provisional application and shorting the detailed description is probably even worse than doing nothing.

Here's my FAQ on the topic:
http://www.isrlaw.com/index.php?option=content&task=view&id=4&Itemid=28

Even the general (non-legal) press is catching on:
http://tinyurl.com/6gonv

Remember, friends don't let friends file provisional applications.

Regards.

[avi]

I will try to make it as complete as possible after reading enough similar patents.

By the way, what was the original intention of uspto when created the option of PPA? Did they mean private inventors to file it themselves, or via professional attornies?

avi

[eric stasik]

Dear Mr. Haydon,

The PPA was created to solve an administrative problem facing foreign applicants.

I don't remember the details, but it has something to do with the US statutes that recognize earlier filed US applications as prior art against pending US applications. An earlier filed foreign application did not receive a date as "prior art" in the US until it was formally filed in the US. This put foreign applicants at a disadvantage which was remedied during the GATT/TRIPS negotiations by the PPA by providing a low cost filing mechanism.

The important thing to take away is that the PPA was not created as a quick and dirty patent for applicants; it was created to solve a complex international trade issue.

Thus, viewing the PPA as a cheap way to get a patent is absolutely wrong and incorrect. As I mentioned above, there are ways you can use the PPA to your advantage, but it is NOT a replacement for a properly written, professionally prosecuted application for patent.

Regards,

Eric Stasik

[JimIvey]

By the way, what was the original intention of uspto when created the option of PPA? Did they mean private inventors to file it themselves, or via professional attornies?

That's addressed in some detail in my faq at the URL posted above.  Mr. Stasik is right -- it pertained to equalizing equities vis-a-vis foreign priority.

Regards.