Law Articles

Return to Law Dictionary Index

The Debate on Provisional Patent Applications

by N. Paul Friederichs III

Provisional Patent Applications (PPAs) are cost shifting tools for the inventor. The PPA creates at least a one year window to investigate the market worthiness of an invention. The cost is about one third of that of filing a Formal Patent Application (FPA). An FPA is required to keep the application pending beyond the PPA period. One may limit further investment to only those inventions determined, after full and fair opportunity for investigation, to be a worthwhile investment. The bar and inventor community are at odds on the value of PPAs.

Recognize that the bar has generally taken a strong opposition to the PPA, citing various shortcomings. The biggest is the lack of money flowing to the lawyers. This objection, while not often explicitly stated, manifests itself in nearly all the objections to PPAs. For example, one author writes:

Slightly Lower Initial Cost. The initial cost of preparing and filing a provisional patent application generally is slightly lower than that of preparing an actual patent application. This is because of lower Patent Office filing fees. There may be some additional cost savings stemming from the more limited requirements of a provisional application. As discussed above, the provisional application requires no particular format, and no information disclosure statement is required. Further, no claims are required. However, such additional cost savings are usually small, since the application must be prepared carefully to make sure it complies with the requirements of 35 U.S.C. �112 that the disclosure be enabling and set forth the best mode for practicing the invention.

Notice in the preceding paragraph how the importance of PPAs are minimized at each step and the amount a client is to pay is increased! For instance, the first sentence suggests PPAs are not "actual" patent applications, but the statute, 35 U.S.C. �111(b), states otherwise. Then the cost savings is minimized to the amount of the filing fee difference. PPAs, however, are about 25%, not 95%, of the cost of an FPA. Finally, the main cost savings factor, e.g., more limited requirements, is brought up as a potential counter-argument, but is thoroughly shot down with legal esoterica! Simply put, this author takes the position that inventors need to pay and pay well.

Some misguided inventors counter assert that PPAs are so simple that anyone can prepare and file such an application. True, anyone can file an application, but those applications are rarely meaningful. Less than 50% of self-filed PPAs I have reviewed disclosed/described any patentable subject matter of the invention. Even less provided sufficient disclosure to later achieve good claim breadth. Such PPAs are not worth the filing fee.

A PPA is a legal document and should be treated as such. While the claim is the focus of an FPA, the description is the key to a well-prepared PPA. That description should be prepared to the point where it can and will be copied directly into any subsequent FPA fully supporting each of any resultant FPA claims. Few inventors can draft PPAs this well. Failure to properly draft a PPA has an ultimate price of loss of the rights to the invention.

The PPA properly used is a powerful cost shifting tool. The current debate is one of dollars. The bar is of the position that no discount should be granted and the inventor should dig deep. Many inventors take an equally polar view, suggesting that the individual can prepare their own PPA without supervision of counsel. A savvy inventor recognizes the correctness in each position and shuns the misguided propositions.

The inventor should find counsel that, without prompting, recommends PPAs. Likewise, counsel should prepare the PPA in a format and completion level identical to that of the Detailed Description section of an FPA. This approach minimizes the cost without risking loss of the rights to the invention. The inventor can, with confidence, investigate an invention's market worthiness and convert to an FPA when warranted.

About the Author:

N. Paul Friederichs, founder, started practice as a patent attorney in 1992 at a major Minneapolis, Minnesota law firm where he was the highest performing associate. In 1993, he started and developed Friederichs Law Firm with his father. Throughout this time Paul�s experience was heavily weighted toward litigation. He served such clients as Tonka Toys, American Harvest and Boston Medical.

He can be reached at http://www.angenehm.com/

Return to Intellectual Property

Return to Law Dictionary Index