• Skip to primary navigation
  • Skip to main content
  • Skip to primary sidebar
  • Skip to footer

Global Patent Research and Alerts | Pearson Strategy Group, LLC

Helping businesses look before they leap. - TM

  • HOW WE HELP
    • Overview of Services
    • Patent Searches
      • Innovation Strategy
      • Patent Analytics
    • Patent Searches for Patent Attorneys
    • Keep Up with Your Industry and Competition
      • Patent Alerts
        • Live Alert Demonstrations
          • Additive Manufacturing – Recent Patents and Applications Alert
          • Aerial Drones (UAVs) – Recent Patents and Applications Alert
          • Blockchain – Recent Patents and Applications Alert
      • Recognize Your Threats, Opportunities
        • Adjacent Technology Example
        • Emerging Technology Example
        • Disruptive Technology Example
      • Competitive Intelligence
      • Custom Market Research
    • Additional Support
      • Frequently Asked Questions
  • ABOUT
    • About Us
    • Meet the Founder
    • Alliance Partners
    • Philosophy
    • Trusted Suppliers
  • SUCCESS STORIES
  • CONTACT
  • NEWSLETTER
  • BLOG
  • Search

Provisional Patent Applications: Cheap “Protection” or Dead Man’s Curve?

Bob Villhard

Please welcome guest blogger Bob Villhard, an Intellectual Property attorney who lives here in Austin, Tex. I always enjoy talking with Bob because we share the same goals for our clients: honest, informative input that is as long-range as possible at a reasonable cost. Bob posts frequently on his own blog Entrepreneurs IP Blog.

In this post, Bob points out some of the pros and cons of provisional patents. Do you know when filing one might make sense and when you are risking Dead Man’s Curve?

Visit Bob’s website Villhardpatents.com for more information and resources.

 

Provisional Patent Applications: Cheap “Protection” or Dead Man’s Curve?

By Bob Villhard

bob@villhardpatents.com

You get what you pay for. Case in point: provisional patent applications (with one notable exception related to the America Invents Act (AIA)).

U.S. law allows inventors to file “provisional” patent applications for a modest fee. Since the costs for provisional applications beat the costs for regular patent applications by quite a bit, many entrepreneurs speed down this fork in the road assuming that they are “protected” (more on this later) and that they can easily convert their provisional applications into regular applications before the one year deadline for doing so.

Here is the catch. The claims of a patent application should define the invention while the remainder of the application should support those claims. Provisional applications however rarely contain claims. It should surprise no one then that provisional applications often gloss over or skip important points (in part) because these applications fail to define the invention with well-crafted sets of claims.

Moreover, instead of supporting the claims, provisional applications often restrict what protection might subsequently be available. For instance, provisional applications usually include large quantities of “patent swearing.” Many of these English words have dual meanings. In everyday, technical, and/or contractual language these terms convey what ought to be done to create a product (or service). But, when read by a patent attorney (working for a competitor) these terms take on different legal meanings which can allow use of the idea potentially without infringement. Worse still, even well-drafted regular applications which arise from poorly drafted provisional applications can legally inherit the flaws of the provisional applications.

This is not to say never file a provisional application. If you find yourself up against the guard rail of an offer-for-sale or public disclosure deadline (see previous postings) then filing a provisional application can make sense. If the intent is to obtain cheap protection, though, entrepreneurs risk skidding over the cliff at Deadman’s Curve.

Of course, the AIA threw in a new wrinkle. Time is now of the essence in filing patent applications due to the first-to-file provisions of the AIA. Because of this alone, and despite their shortcomings, provisional patent applications serve to get an early filing date and should be considered as soon as an entrepreneur realizes that an idea has commercial potential. But, to plug the holes in them, entrepreneurs should also consider having a regular, non-provisional, patent application prepared and filed within a reasonable time following the filing of their provisional application. Otherwise, the gaps in their provisional applications will cause those provisional applications to be little better then weak guard rails on dead man’s curve.

For more information please contact Bob Villhard at bob@villhardpatents.com or 512-897-0399 or visit http://www.villhardpatents.com/.

Share this:

  • Click to share on Facebook (Opens in new window)
  • Click to share on Twitter (Opens in new window)
  • Click to share on LinkedIn (Opens in new window)
  • Click to share on Pinterest (Opens in new window)
  • Click to email a link to a friend (Opens in new window)

Reader Interactions

Leave a Comment Cancel

Your email address will not be published. Required fields are marked *

sidebar

Blog Sidebar

Subscribe to Our Newsletter Overview of Our Services Schedule a Consultation

Recent Posts

  • Intellectual Property Strategy for SaaS Startups
  • How to Confidently Decide Between a Provisional and Non-Provisional Patent Application for Your Invention
  • Summer 2021 Newsletter from Steve Pearson
  • How to Leverage the Amazon Brand Registry
  • Approaching Patent Valuations, Common Methods and Qualifications of Analysts
  • Understanding Patents and the Need for Valuation: The Basics
  • Summer 2020 Newsletter

Footer

Let’s Talk

What to expect. Sample reports. Pricing.

  • This field is for validation purposes and should be left unchanged.

Recent News

Andrew Rapacke

Intellectual Property Strategy for SaaS Startups

From Steve: Please welcome returning guest blogger Andrew Rapacke. Andrew is the managing partner at The Rapacke Law Group, a full-service intellectual property law firm. Andrew’s post examines several important topics software companies need to Read More

Randi Karpinia

How to Confidently Decide Between a Provisional and Non-Provisional Patent Application for Your Invention

From Steve: This Guest blog by Randi L. Karpinia, esq. covers what could be the most common inventor question. Randi Karpinia, author of Sagacity Legal’s “The Legal Blog”, helps small businesses and entrepreneurs minimize their legal risks. Read More

Social Media

TwitterYoutubeLinkedin

Phone: 1-512-466-1450 | Email: innovate@pearsonstrategy.com

© 2023 Pearson Strategy Group, LLC. All Rights Reserved