What are the risks associated with a provisional patent application?
While the use of provisional patent applications is by now a commonplace practice, some controversy remains among patent professionals as to whether or not these placeholder applications are advantageous for inventors. Despite all the positive benefits of filing a provisional patent application, the lessened formality requirements tend to have the detrimental effect of reducing the amount of attention paid to actually preparing and filing the application. It is important to note, for example, that the requirement for clearly and fully explaining the invention is the same for the provisional patent application as it is for the nonprovisional application. By using the provisional application as a low-cost, temporary alternative to a nonprovisional patent application, inventors risk taking shortcuts in their provisional applications that might later jeopardize obtaining or enforcing patents.
If the provisional route is used, the inventor should ask, “Could someone else of ordinary skill in the art, reading this description, practice the invention as it will be claimed?” Another consideration that must be made when filing a provisional application is whether the inventor has explained the best mode of practicing the invention. Unlike secret family recipes, which when casually shared might be missing a vital ingredient or two, patent applicants are duty-bound to teach the world the details of the best embodiment known. Leaving the secret sauce out of your patent application will result in an invalid patent.
Another significant consideration when filing a provisional application is that the provisional application automatically becomes abandoned when its pendency period expires, 12 months after the filing date. In order to preserve any benefit from the provisional patent application, an applicant must either file a nonprovisional application claiming benefit of the earlier filing date in the United States, or must convert the provisional application into a nonprovisional application before the one-year pendency period expires.
Learn more by visiting our microsite Provisional Patent Help, a resource to discover, understand, and file provisional patent applications.
Contact John Ferrell at JFerrell@carrferrell.com if he can further assist you.
About the Author
John Ferrell is a founding partner of Carr & Ferrell LLP, one of Silicon Valley's foremost technology law firms, and specializes in patent and intellectual property law matters. He is the Chair of the firm's Intellectual Property Practice Group.