Jeremy M. Ben-David, Managing Partner JMB Davis Ben-David
Much (digital) ink has been spilled, including by the present writer, in explaining why Provisionals are so bad, and how they are misused by inventors and small companies who don’t know any better.
I would like to correct this situation.
Provisionals are not inherently bad, any more than whisky, cars or money are inherently evil. It is what we choose to do with all these things that can lead to bad results, if misused or abused. The discussion should focus on people and their choices, not the tools, per se. A tool that is intended for a specific purpose should be used as intended. If used improperly, then harm can be caused. Tools intended for use by informed experts are, by definition, best used by such experts; or, at least, by people who know what they’re doing.
This is also true of Provisionals. When used correctly, they have several benefits, among which are the following:
- Speed – there’s nothing like a provisional when you need to make sure to obtain a filing date at the last minute before an unexpected disclosure to a third party. You should clearly prepare a full application and file that as soon as possible, but provided your provisional is full and enabling, you will, in most cases, secure a valid filing date from which subsequent applications can claim priority.
- Language – for those filing from outside the US and having a disclosure in a language which is not English, that disclosure can be used to obtain a filing date. You should file an English translation as soon as possible afterwards, but there is no requirement for the initial disclosure to be in English.
- Low cost– the filing fee is considerably less than that of a Utility or “full” application. Enough said.
- Filing flexibility for works in progress – You expect develop certain aspects of your invention during the 12 months following an initial patent application filing. One way to proceed is to file a utility application, and then to file a series of CIP applications. Another way is file series of Provisionals, each including the original or previous disclosure, as well as the newest improvement, and then at the end of the priority months, filing a single utility application claiming priority from all the Provisionals. You capture the same, but the savings in direct filing costs, prosecution costs and case management costs are considerable.
- Non-publication – in as much as you may file a provisional in a hurry (see point #1), you’re liable to introduce mistakes. If you’ve filed in a rush, then the chances are you’ve probably not filed a fully drafted application, and in such a case, you’ll have to draft the application fully, giving you a chance to spot your mistakes. And if necessary, you have a possibility of withdrawing the provisional, making sure that neither it – nor your mistakes – ever see the light of day.
- Non-examination – you’ve filed in a rush – or not. You have drafted claims (because you know that it’s good practice) but you’re really not sure about them, and the last thing you need is for them to be examined. You just wanted to get a filing date and nothing more. Well, you’re in luck, as Provisionals are never examined. Ever. That’s the law.
The Bottom Line:
A Provisional is a good tool with significant potential benefits, but only when it is used properly. That means that if your disclosure is incomplete, you will not secure a valid filing date.
That, in turn, dictates that best practice is to have your application – yes, even when to be filed as a Provisional – drafted in full. That way, you’ll know exactly what you’re claiming and your disclosure will be fully ‘engineered’ to provide a solid basis for your claims.
In a pinch, at least have a Patent Attorney draft some claims, and have her review the disclosure for completeness.
If there’s no time, or money, for any of that, you should at least know that if any rights are endangered as a result, this is NOT because the Provisional is a defective tool, but because it has not been used so as to gain the full potential benefits that it has to offer.