Expert Patent Attorney Explains Why Filing a Provisional Is Almost Always a Bad Idea

Avoiding the Pitfalls of Provisionals


A Provisional Patent Application Is Actually Worthless

A provisional patent application doesn’t really protect anything by itself. You can’t sue anyone for infringing on your invention using your provisional. Also, you’re highly unlikely to license or sell your invention based on a provisional.

Further no one ever actually reads or evaluates a provisional patent application, not even the patent examiner, unless an issued patent eventually results AND a lawsuit is being contemplated based on the issued patent. Provisional applications are not published for the general public, unlike all issued patents and most real patent applications, both of which are published on USPTO.gov and accessible to all.

Provisional applications automatically expire after one year, and a full non-provisional patent application must be filed before expiration.

Filing a provisional patent application only holds your place in line. It’s like taking a ticket at the deli counter. You can’t eat the ticket.

You can start using the term “Patent Pending” after filing your provisional application, but that only means that you intend to file a real patent application within the next year. If you eventually file the real patent application, it will have a priority date that is the same as the filing date of the provisional, ASSUMING that the provisional adequately disclosed the invention technically and legally.


A Provisional Patent Application Is Actually WORSE than Worthless…
It Could COST You Your Patent Rights!

Preserving your exclusive rights to your invention through a patent depends on meeting specific deadlines when filing a patent application.

In the US, you have a one-year grace period to apply for a patent after your first public disclosure or sale of your invention. Wait one year and one day, and you’re too late: you’ve lost all your rights! If you want to preserve your foreign patent rights, there is no one-year grace period — you MUST apply for a US patent BEFORE that first public disclosure or sale.

Filing a provisional patent application might seem like a faster and cheaper way to preserve your rights before you miss that one-year deadline, or before you lose your foreign rights. But if you need to RELY on the priority date of that provisional application, it could end up costing you ALL of your rights.

Relying on the filing date of a provisional patent application can mean that you end up completely losing all of your patent rights.

For example, if your provisional patent application fails to adequately describe the invention claimed in your patent application, then you can no longer use the priority date of the provisional. Instead, you must use the priority date of the full non-provisional application that was filed later. It’s as if you never filed the provisional at all.

This means that if you disclosed or sold your invention before filing the full non-provisional application, then you’ve lost all of your foreign rights. If you disclosed or sold your invention more than one year before filing your non-provisional application, then you’ve also lost all of your US rights. Your issued patent would be completely invalid.

Real Companies Who Lost Their Patent Rights Because They Filed a Provisional

This happened to New Railhead Manufacturing when they tried to sue Vermeer Manufacturing Company for infringing their issued patent. Unfortunately, their provisional application didn’t adequately disclose the invention, so they lost the earlier priority date of the provisional. And they sold their patented drill bit more than one year before filing their full patent application (believing that filing the provisional application would protect them and extend that deadline by one year). Which meant that their patent was found to be invalid, and they lost all their rights.

Other companies have also learned this lesson the hard way at great cost:

Idenix Pharmaceuticals Inc. (a subsidiary of Merck & Co Inc.) originally won a $2.5 billion patent verdict, the largest patent damages award in history, against Gilead Sciences for infringing on their hepatitis C treatment. But their victory relied on the priority date for their provisional patent application. And the later ruling for Storer v. Clark determined that their provisional did not enable a person of ordinary skill to produce the target compounds without undue experimentation. Without the benefit of the priority date of the provisional patent application, their issued patent was rendered invalid, which wiped out that $2.5 billion verdict they originally won. And yet the common wisdom is that a provisional can save you money, but in this case a provisional COST over $2.5 BILLION.

There are even cases where a provisional patent application was written with great care and skill, and the full patent application was likewise prepared well and filed within one year of the filing date of the provisional. However, a single sentence claiming priority to the provisional in the full patent application was accidentally omitted, rendering the provisional ineffective in establishing priority, resulting in invalidation of the full patent application. (Which happened in the case of Worlds, Inc. v. Activision Blizzard, Inc.)

These are just some of the companies that later regretted filing a provisional. Learn from their mistakes. Skip this risky step and go straight to filing a full non-provisional patent application.


A Provisional Patent Application Can Reduce the Value of Your Issued Patent

A full utility patent application includes claims to your invention, the claims basically representing the specific property lines that define what your issued patent protects.

A provisional patent application doesn’t require any claims, and only requires that you disclose the teaching of how to make and use your invention. And yet, when you later file the full patent application, you can only claim what you have already disclosed in your provisional application.

You wouldn’t start building a house without knowing exactly where your property lines are. Then why would you start building a business based on your invention without knowing the property lines that define what you invented?

Provisional Applications Disclose Too Narrowly

Many inventors disclose their inventions too narrowly. They don’t consider the broader applications for what they’ve invented. Thus, they miss out on the full value of their invention. That’s because the full non-provisional patent application can only claim the technical teaching of the narrow disclosure from the provisional.

For example, imagine that you invented a car tire that never went flat. And you hurriedly filed a provisional patent application teaching how to make and use your flat-proof car tire. Later, when you hire a patent attorney to write the non-provisional patent application, he points out that the provisional application has unnecessarily limited the invention to only car tires, when it could have also included bike tires, inflatable life vests, and basketballs. Your patent is now worth millions of dollars LESS than if you had never filed a provisional application to “save money.”

Provisional Applications Neglect Workarounds

Many inventors neglect to disclose alternate embodiments by which competitors could design around their patents. Again, the full patent application can only include what was disclosed in the provisional, leaving the final issued patent vulnerable to easily foreseen workarounds. If competitors can easily avoid infringing the patent using these workarounds, then the final patent is essentially worthless.

For example, returning to our fictional example of car tires that never go flat, if the provisional application only disclosed making the car tires out of vulcanized rubber, the non-provisional patent application cannot add any new technical matter, such as making the car tires out of silicone. Therefore, the claims of the non-provisional application that rely on the priority date of the provisional cannot block competitors from making the car tires out of silicone, which was not contemplated by disclosure in the provisional.

Provisional Applications Often Omit Essential Disclosure

Inventors often unintentionally leaves gaps in their disclosures. As the experts on their own inventions, inventors often have blind spots for what is commonly known and what needs to be taught. If you leave out a crucial explanation that you thought was common knowledge, but that the Judge decided should have been included, then the provisional patent application will fail to provide priority because the provisional inadequately described the invention. Thus, you would lose the priority date of the provisional filing, and consequently the patent would only have the priority date of the later-filed full patent application. That later priority date could cause you to lose your foreign patent rights, and/or your US patent rights.

Inventors sometimes even INTENTIONALLY leave gaps in their invention disclosure in a misguided attempt to protect what they see as a trade secret, or the “secret sauce.” But you can’t mix trade secret protection and patent protection. To get patent rights, you must fully disclose your invention such that “one of average skill in the art” can make and use the invention without “undue experimentation.” If an inventor leaves out critical information from their disclosure to keep some part of their invention a secret, then their provisional patent application won’t adequately disclose their invention. It will then be as if the provisional application was never filed at all. With the later priority date of the non-provisional patent application, they can lose foreign rights and possibly US rights as well.

A Good Patent Application Starts with Writing the Claims First, But a Provisional Application Doesn’t Require Writing Any Claims

Writing a good broad patent application starts with drafting a broad set of claims, and then teaching the invention in the patent application to support those claims. By disclosing the invention first in a provisional patent application, you are tying your patent attorney’s hands, requiring that claims be written using only what you’ve already disclosed, and using only the particular words that you used to disclose your invention.

In the case of MPHJ Tech v. Ricoh, the Federal Circuit affirmed that “a provisional application can contribute to understanding of the claims.” So it is vital that when writing any provisional application, possible future claims are considered that could be in the non-provisional application. The easiest way to accomplish this is to skip the provisional entirely, and simply start by preparing a non-provisional application.


A Provisional Patent Application Makes It Harder to License or Sell Your Invention to Other Companies

Invention marketing companies often advise their customers to file a provisional patent application so they can first test the market for the invention before investing money in a full patent application.

The flaw in that approach is that the provisional patent application doesn’t require any claims, which are essentially the property lines for your intellectual property. Without presenting any clear property lines, who would buy your intellectual property? Imagine if you tried to sell someone a plot of land with just a wave of your hand suggesting that you own all of that land over there. They would reasonably want to wait for a surveyor to professionally mark out the property lines.

Even if companies might be interested in buying or licensing your invention, arriving with just a provisional patent application shows that you yourself are not sufficiently confident in your own invention to actually invest in a full patent application.

A provisional patent application suggests to companies that you are just testing the waters, ready to drop your invention if no company is interested. They are then free to discourage you, only to later scoop up your invention and run with it after you’ve voluntarily forfeited your invention rights.

Companies know that a provisional patent application automatically expires after one year, at which time you will have lost all of your rights if you haven’t properly filed a full non-provisional patent application. Companies can easily wait that year. Then, if you did forfeit your rights by not following up with filing a non-provisional patent application, they can step in and just take your invention without compensating you.

Or, if they don’t want to wait that year, they can look at the narrow scope of your provisional patent application and develop their own version of your invention using a workaround that isn’t in your disclosure, thereby not infringing your claims, even if you eventually do receive a patent.


A Provisional Patent Application Delays Issuing of Your Patent

Filing a provisional patent application delays getting an issued patent by up to a full year.

Whether you’re a small business, a startup, or an individual inventor, you want to get your patent issued as soon as possible. The sooner you get an issued patent, the sooner you can ASSERT your rights, SELL your rights, or LICENSE your rights. Having an issued patent is an actual asset that increases the financial value of your company, and attracts more investors.

The sooner you get an issued patent, the sooner that patent is worth real money to you or your company. Why would you want to wait an extra year to make money from your patent?

Filing a provisional patent application adds up to a full year to the timeline needed to get your patent application examined and issued. Instead, if you filed a full non-provisional patent application directly, you would be a year closer to getting your patent, and a year closer to making money with your patent.


A Provisional Patent Application Increases the Overall Cost to Get a Patent

One of the main reasons inventors are advised to file a provisional patent application is to save money. Sometimes they are even given the disastrous advice to write the provisional themselves to avoid paying a lawyer. And yes, in a very short-sighted way, filing a provisional patent application is a cheaper path to reach the goal of “Patent Pending.”

But if you want to use the term “Patent Pending” for more than just one year, and actually get an issued patent on your invention, then filing a provisional application is actually MORE expensive.

If you paid money to file the provisional patent application, you still have to pay for the preparation and filing of a full non-provisional patent application. What you paid for the provisional application is just EXTRA money that you wasted.

Also, it is often more difficult to write a patent application based on a poorly written provisional patent application than it would be to write a non-provisional patent application from scratch. Depending on the quality of your provisional patent application, you may end up spending MORE money getting your non-provisional patent application prepared.

Having a provisional application usually doesn’t save you time or money when preparing a non-provisional patent application. Thus, you end up paying for BOTH the provisional AND the non-provisional applications. On top of that, the non-provisional application will often cost even MORE to prepare than if it wasn’t limited by the disclosure of a provisional.

Even if you hire a good patent attorney to write both your provisional and non-provisional patent applications, the work is less efficient when done in two steps separated by months of time. Thus, it still won’t save time or money to first prepare and file a provisional patent application.


A Provisional Application Can Jeopardize Your Foreign Patent Rights

Do you want to protect your foreign patent rights? Once you file a provisional patent application, you have one year to file your PCT application to extend your opportunity to apply for foreign rights beyond one year. This is the same one year you have to file your full non-provisional patent application. This means that at the end of that one year, you have to come up with the money for BOTH the PCT application AND the non-provisional patent application at the same time. For many inventors, they simply don’t have the money for both, forcing them to lose the opportunity to apply for valuable foreign patent rights.

If instead you initially file a full patent application rather than a provisional, then you can first pay for your full patent application, and then a year later, you can afford to pay for your PCT application to extend your opportunity to apply for your foreign patent rights. Separating the two expenses by about a year makes it more financially feasible to protect BOTH your US rights and your foreign rights.


Why Are Inventors so Often Advised to File a Provisional Patent Application?

If provisional patent applications are such a bad idea, why are so many inventors advised to start with a provisional as the first step to getting a patent?

Business and Marketing People are Not Patent Attorneys

First of all, the people giving that advice are not patent attorneys. They are generally business and marketing people who don’t understand patent law. They are focused on the quickest, cheapest way to get that “Patent Pending” status without considering how to protect the invention past the first year.

Many people believe that it’s easier and quicker to disclose an invention in a provisional patent application, but in reality, the disclosure standard is the SAME for provisionals and full patent applications: BOTH disclosures must be clear and complete according to the patent law as set forth in 35 USC Section 112.

Document Preparation Services are Not Patent Attorneys

There are also many document preparation services that will offer to get your provisional application filed, sometimes for as little as $199. These are also not patent attorneys, and they are merely filing whatever provisional application you give them as the inventor, regardless of how poorly written the provisional application is.

Invention Marketing Companies Want You to Spend $$$ on Their Services, Not Patents

Invention marketing companies are notorious for advising new inventors to file for a provisional patent application. That’s because invention marketing companies want inventors to spend money on their marketing services, not on paying a patent attorney to prepare and file a strong patent application. But that puts “the cart before the horse.” Common sense tells us that an invention should be protected before it is marketed.

When an inventor follows the advice of invention marketing companies, as the end of the one-year provisional term approaches, the inventor is left to their own devices to scramble to find a patent attorney and get time in their schedule to prepare and file a well-written full patent application before the one-year deadline. Unfortunately, many inventors have spent so much money on the invention marketing companies’ services that they can’t afford to hire a patent attorney to prepare and file a full patent application by the deadline, and so they end up losing ALL of their patent rights. Ironically, that leaves them with no asset to market, and thus the money paid to the invention marketing company is completely wasted.


In a First-to-File World, Should I Take the Extra Time to File a Full Non-Provisional Patent Application?

Originally, the US had a first-to-invent patent system. This meant that the first person to invent would be awarded the patent, even if a second inventor filed a patent application before the first inventor.

Now, for all patents filed after March 16, 2013, the US is a first-inventor-to-file patent system. This means that the first true inventor to file a patent application will get the patent, even if another inventor conceived of the same invention before them.

Many businesses and inventors interpret this new first-to-file world as a race to the patent office, rushing to quickly disclose their invention, slap it into a provisional application, and file it as quickly as possible. After all, if someone else files before you, you would lose all your rights.

But a poorly written provisional application may offer no protection at all. In fact, for all the reasons explained previously in this article, a poorly written provisional application can actually damage your patent rights, or even cost you all of your patent rights!

Even if another person files their application before you, you would lose your rights only if BOTH of the following are true:

  1. That person must be a TRUE inventor.
  2. If you show your invention to someone, they cannot run out and file their own patent application on that invention, because it would be for an invention that they did not actually invent. They would need to prove that they independently invented the invention themselves to legitimately apply for patent rights.

  3. That person must be the first to file a fully enabling disclosure of the invention.
  4. So, if in a rush to be the first to file, another inventor filed a poorly written provisional application that didn’t fully disclose the invention, they would lose the priority date for that provisional application, thereby causing your higher quality non-provisional application that was filed AFTER their provisional to be the first effective application filed.

So even in a First-Inventor-to-File world, there are still benefits to taking the time to prepare a quality non-provisional patent application. The risks of someone else filing before you and costing you your patent rights are lower than the risks that come with filing a bad provisional application.


Is It Ever a Good Idea to File a Provisional Patent Application?

For the first 204 years of the US patent system, provisional patent applications didn’t exist. The only option was simply to prepare and file a full utility patent application.

Then in 1994, provisional patent applications were introduced.

The only entities really served by filing provisional patent applications are large companies, such as big pharmaceutical companies, who can use provisional patent applications to extend their patent rights by an additional year. For these companies, the final year of their patent term is the most lucrative, so it makes sense to delay the start of their patent process by a full year if they can capture an extra year of exorbitant profits at the end.

But big companies avoid all the problems that come with provisional patent applications by paying a patent attorney to prepare an actual full non-provisional application, and then filing that as a “provisional.” Then a year later, they don’t have to write or prepare anything more. They just refile the same provisional application as a full non-provisional patent application.

But for small businesses, startups, or individual inventors, provisional patent applications are only useful when there is no other choice. For example, if you need to quickly satisfy a deadline or risk losing your rights completely, but don’t have the time or money to file a full non-provisional patent application in time, then a provisional patent application is better than nothing. With enough effort and expense later, perhaps some patent rights can be salvaged.


Enhanced Provisional™ —
A Possible Solution for the Individual Inventor or Small Company

In some cases, an individual or small company simply cannot afford the fees and/or time to prepare and file a full non-provisional patent application in time to meet a disclosure deadline, such as public presentation of the invention at a tradeshow or conference.

For such situations, Russ Weinzimmer & Associates PC offers the ENHANCED PROVISIONAL™. This is an innovative solution that provides many of the advantages of a full non-provisional patent application, while reducing or eliminating SOME of the drawbacks of a typical provisional patent application.

However, not all clients qualify for this solution. Please call to see if an ENHANCED PROVISIONAL™ is right for you.


Are You Ready to Protect Your Invention the Right Way?

Russ Weinzimmer & Associates, PC is an experienced patent law firm serving clients nationwide. We have the knowledge to represent individual inventors and entrepreneurs, as well as startups. We understand what adds value to a business, and we put that knowledge to work for our clients.

Call for your Free Phone Consultation with Patent Attorney Russ Weinzimmer: (800) 621-3654.


More articles from Strategic Patent Law can be found at our Articles page.

STRATEGIC PATENT LAW

RUSS WEINZIMMER & ASSOCIATES, PC

Free Phone Consultation
(800) 621-3654