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Should you file a Provisional Patent Application?

posted Jan 18, 2013, 9:20 AM by Robert Crownover   [ updated Feb 8, 2013, 10:11 PM ]
Provisional Patent Applications are a double edge sword.

On one hand they are easy to file, and can be very cheap. This is because individuals can file with the USPTO on their own and pay only the filing fee which is about 125 dollars. There are even companies that will do most of the paper work for you and charge a nominal fee.

What most inventors fail to consider is the problems that a Provisional Patent Application can create.

  1. Prosecution History Estoppel (PHE) is a doctrine of forfeiture. The forfeiture occurs when a Non-Provisional Application is filed with narrower claims. The subject matter between the claims in the Provisional Patent Application and the Non-Provisional Application is arguably forfeited. This is an area for litigants to argue over, but is it worth it?
  2. Patent Unenforceability. When the Non-Provisional Patent Application claims priority to the Provisional Patent Application, usually the claim is made generally and broadly. If any new material was added to the Non-Provisional (and there almost always is) this claim of priority is not entirely true. When this occurs it can be argued that the statement constitutes fraud on the patent office. The consequence is Patent unenforceability.
  3. EPO claim scope needs to be justified in the Provisional Patent Application. If people are going to file with the EPO, the claim scope of the eventually filed Application will need clear support in the Provisional Patent Application. Most practitioners meet this requirement by drafting entire sets of claims and placing them in the body of the Provisional Patent Application or in the Brief Summary of the Invention of a Provisional Patent Application.
That said, a properly created Provisional Patent Application will be almost as expensive as drafting the Non-Provisional Patent Application.

Is there ever a great reason to file a Provisional Patent Application? The single time it makes sense is when an inventor is running up on a statutory bar and absolutely does not have enough time to draft a Non-Provisional Patent Application. In this situation, a Provisional may preserve more rights that complete forfeiture under a statutory bar.