After an inventor conceives of an invention, an application seeking patent protection may be filed with the United States Patent and Trademark Office. The first or initial patent application may either be a provisional patent application or nonprovisional patent application.
The provisional patent application is described as a lower-cost option compared to the non-provisional patent application. The minimum requirements to file a provisional patent application are less than the requirements to file a nonprovisional patent application. For example, the provisional patent application does not require a claim set, a nonprovisional patent application does. Also, the government filing fee for the provisional patent application is about $400 less for a small entity.
Even though the requirements for preparing the provisional patent application are lower than a nonprovisional patent application, a full disclosure of the invention must still be made in the provisional patent application in the same manner that a full disclosure of the invention must be made in a nonprovisional patent application. The following case illustrates the harsh consequences of inadequate disclosure in a provisional patent application.
In New Railhead Manufacturing, LLC v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002), the patentee sold a new drill bit for drilling rock formations. As allowed under Patent Laws, the inventor filed a provisional patent application within one year after the sale date. If the inventor had waited more than one year, then the inventor would be barred from seeking patent protection. More than one year after the sale date but before the provisional patent application was abandoned, the inventor filed a non provisional patent application claiming priority to the provisional patent application.
The claim of priority allows any patent maturing from the nonprovisional patent application to have the filing date of the earlier provisional patent application instead of the later-filed nonprovisional patent application, but only for the information disclosed in the earlier-filed provisional application. If the nonprovisional patent application includes additional information, then the claim of priority would be ineffective for that new information.
In New Railhead, the accused infringer alleged that the claims at issue in the patent should not be allowed to receive the benefit of the earlier filed provisional patent application by way of the claim of priority. The reason was that the patent’s claims required the drill bit to be angled with respect to the drill bit housing. Unfortunately, the provisional patent application did not disclose any angular relationship. The Court agreed and invalidated the patent since the filing date of the provisional patent application is now irrelevant and the new drill bit was sold more than one year before the filing of the nonprovisional patent application.
It is important that the provisional patent application include a full disclosure of the invention. Anything less and the provisional patent application may be ineffective at establishing a filing date of your claimed invention.
The majority of time spent on preparing a patent application is on drafting and revising typically the detailed description of the invention section and explaining the drawings. This material attempts to explain in full detail all of the various aspects of the invention. Although the provisional patent application is a lower-cost option, it is still not a cheap option if done properly.
Also, websites offer assistance in filing provisional patent applications at very cheap prices. Based on my review of some of these websites, they lead you through a series of questions so that at the end of answering all of the questions, your answers are placed in a provisional patent application format. However, they do not appear to provide any legal guidance which is needed to guide you in deciding whether to file a patent application, what to disclose in the patent application, and how to use the right words so that your invention is not narrowly construed.
Patent attorneys work at drafting broad patent disclosures, interpreting current case law, and providing a patent strategy based on our experience and knowledge. The online patent services that I have reviewed do not provide legal advice regarding the patent process.
Should you have any further questions, please feel free to contact me.