attorney says can't do cheap provisional... help

[rts]

Disagree. I agree that 10K is in line with a "full price patent utility application" rather than a "quick and dirty provisional." But I would have no qualms requesting a technical description from the inventor as part of the utility application process.

That is, just because you're paying full price doesn't mean the best starting point is a one-sentence back-of-the-napkin "I have an idea" disclosure. For me, the best starting point is usually some sort of written technical description.  I usually supplement that with a conversation in which I ask focused questions and give the inventor plenty of opportunity to expand/expound. But I still like to have a written document to serve as a springboard for the conversation.

You're absolutely right and I'd be a fool not to agree with you. But there's a difference in asking the inventor for some technical description (most volunteer it, in my experience) and an attorney saying she "doesn't do a technical write-up explanation of the invention", which to me means she'll formalize the inventor's text, write some claims, and file it. That's not worth 10k.

[JimIvey]

Sorry for coming late to the party.  I was busy.

Provisional applications are measured by the exact same legal standard for sufficiency as real, non-provisional applications.  If you hope for a big discount for your application merely because it's "provisional", you're looking for a provisional application that is not legally sufficient.  And, that would likely provide no protection whatsoever.  There is no partial credit in patents; they're either sufficient or they're not.

That's not worth 10k.

That might be right, since I can typically write complete, moderately complex patent applications for less.  However, some inventions are ridiculously complex -- some costing six figures for the application (I've heard tale of 6-figure responses to office actions; still trying to grok that).  So, $10k could be a huge discount, albeit unlikely.

Regards.

[Robert K S]

Provisional applications are measured by the exact same legal standard for sufficiency as real, non-provisional applications.

But what are the circumstances where such sufficiency would be questioned or invoked?  Only where "prior" art came along between the time of the filing of the provisional and the nonprovisional, and that art was not derived from the inventor, no?

I think in many cases it's possible for a competent applicant to write his or her own provisional.

[JimIvey]

But what are the circumstances where such sufficiency would be questioned or invoked?  Only where "prior" art came along between the time of the filing of the provisional and the nonprovisional, and that art was not derived from the inventor, no?

Precisely.  Legal sufficiency of the provisional application only comes into play when you need its filing date.  If you don't need the provisional's filing date, you can file any piece of garbage as a provisional application or nothing at all.  And, nothing at all is cheaper than any provisional application, piece of garbage or otherwise.

On the other hand, if you do need the filing date of the provisional application, anything less than an application that meets the same legal requirements of a real, non-provisional application won't help you.

Regards.

[bleedingpen]

Provisional applications are measured by the exact same legal standard for sufficiency as real, non-provisional applications.

But what are the circumstances where such sufficiency would be questioned or invoked?  Only where "prior" art came along between the time of the filing of the provisional and the nonprovisional, and that art was not derived from the inventor, no?

I think in many cases it's possible for a competent applicant to write his or her own provisional.

Not sure I agree with that.  If the applicant had a 102 event before the filing date of the provisional and then the provisional was insufficient for 35 usc 112 support and the applicant then waits the entire 365 days to file the utility, then the applicant's own disclosure/offer to sale/publication/etc is invalidating of any claim in the utility that is not supported by the provisional.

For this reason, I try to push clients to file the utility at some period of time less than one year from the provisional filing date - typically six months. 

[Robert K S]

If the applicant had a 102 event before the filing date of the provisional and then the provisional was insufficient for 35 usc 112 support and the applicant then waits the entire 365 days to file the utility, then the applicant's own disclosure/offer to sale/publication/etc is invalidating of any claim in the utility that is not supported by the provisional.

That's right.  Although one supposes that if the applicant had an enabling 102(b) publication or disclosure, he or she would have been able to put that content into the provisional and 112 support shouldn't have been a problem.  Usually when we talk about poor 112 support in a provisional, we're talking about a provisional application written from scratch, not based on an earlier writing, where one or more facts necessary for enablement (which could come in the form of description or drawings) are inadvertently omitted out of negligence or because of a time crunch.

[MYK]

$10,000 for a provisional? And she wants you to write the specification?? WTF do you need her for then??? And on top of it she said it would be quick and dirty. She sounds like a real POS and scam artist. Imagine the scams she would run on you for a non provisional. Report her to the PTO.

Report her for what?  Pricing her work too high?

[ChrisWhewell]

Legal sufficiency of the provisional application only comes into play when you need its filing date....

Indeed.   Unfortunately, some inventors have filed sketchy or legally-insufficient patent applications via the provisional filing procedure, and then make disclosures, believing they're "protected".   There's certainly a limit to how much one can cut costs before the "thing" they're desirous of acquiring is of no value; I typically ask folks that if you don't have enough money to spend on a quality patent application, how do you plan to reduce the thing to practice, build prototypes, and do marketing ?    Many believe they're going to file a patent application for a song, introduce it to big company X, and  get a big smile, a gold medal, and fat jumbo bank draft in the mail.   I am in some instances the chosen one who gets to introduce them to one of the painful truths of life, sometimes before they've invested a bunch of time & $$, sometimes after its already gone.   I may make less $$ but I sleep pretty soundly.

[ChrisWhewell]

$10,000 for a provisional? And she wants you to write the specification?? WTF do you need her for then??? And on top of it she said it would be quick and dirty. She sounds like a real POS and scam artist. Imagine the scams she would run on you for a non provisional. Report her to the PTO.

Its probably a safe bet that the day will come when $ 10,000 for a provisional will be a bargain, if the "dollar" survives long enough.   Remember, PTO filing fees for a non-provisional application were a mere $ 65, not that long ago  (my definition of long), the issue fee was a couple hundred bucks, and there were no maintenance fees (don't forget to include discounted values of those in your financial projections).    Patent costs may seem high, but the price of having a valuable invention and not having a patent protecting it is much much higher.   When replacing brake pads, I have a choice between the $ 20 ones and the $35 ones - I typically spend the extra, but that's only because I'm old and have become more fond of my brake pedal than the accelerator.