An ever increasing proportion of US-based patent applicants rely upon provisional patent applications.
For many, a provisional application is seen as a low-cost mechanism for claiming a priority date and for delaying the eventual higher cost of drafting and filing a non-provisional application. More sophisticated parties also use a provisional application as a way to shift the patent term back by one year. One problem with the cost-savings approach is that provisional applications only serve their purpose if they include a sufficient disclosure to protect the eventual claims.
I provisional patent applications can be a very useful tool, but only when they are done right. When provisional patent applications are done poorly you not only don’t get any benefit, the filing potentially demonstrates that as of that moment you were not in possession of an invention, which could be catastrophically bad.
Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention had not ripened past the idea stage at the critical moment the invention was memorialized at the time of filing the provisional patent application. Therefore, it is critically important to understand what is required in a provisional patent application .
Drawings in a Provisional Patent Application
There is a popular misconception about drawings in a provisional patent application. Many believe that that drawings are not necessary in a provisional patent application, and some non-attorney services and courses suggest that drawings are not required. Apparently the belief is that the requirements for provisional patent applications are different than for non-provisional patent applications. This is simply not the case. Yes, provisional patent applications require fewer formalities and the focus can be on the disclosure rather than the form of disclosure, but the disclosure must be as complete as a non-provisional patent application in order to provide a useful priority date. Thus, if drawings are necessary to understand the invention they are absolutely necessary in a provisional patent application.
The relevant statute that defines this requirement is 35 U.S.C 111(b), which says:
b) PROVISIONAL APPLICATION.-
(1) AUTHORIZATION. A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include-
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
For those not thoroughly marinated in patent law the best rule of thumb is that drawings are ALWAYS required. This is an overstatement, but not by much. Yes, there are exceptions, but 35 U.S.C. 113 says drawings are required if necessary to understand the invention. In my experience the only inventions that are not better understood with drawings are chemical compounds, because the formula tells the whole story.
MPEP 601.01(f) says that for the purpose of awarding a filing date, a patent application that claims a method does not need a drawing. Notwithstanding, I would greatly prefer that newbies read that as the United States Patent and Trademark Office being extremely lenient in their interpretation of 35 U.S.C. 113. The reality is that even a method can be depicted in patent illustrations, and really should be. A picture really is worth at least a thousand words in a patent application and is a great way to expand upon a written disclosure to provide additional information about the invention.
A Complete Description
Drafting a patent application is not an easy task and those that take advice on patent law or drafting patent applications from those who are not patent attorneys or patent agents typically get bad advice. Non-attorneys and non-agents just don’t understand the law. Whether they are being malicious or are just not well enough versed to know that what they are saying is nonsense is really of no importance as far as you the inventor is concerned. The damage that will be done is the same regardless of benevolence or lack thereof. Follow bad advice and you suffer the consequences just the same whether bad advice was handed out maliciously, intentionally or as the result of a lack of understanding.
Now don’t get me wrong, provisional patent applications ought not to be feared as they are in some circles. Having said this, however, you absolutely need to know that the description of the invention needs to satisfy the disclosure requirements of 35 U.S.C. 112 first paragraph as of the date it is filed. In fact, in order for any patent application to be a useful priority document it must satisfy the requirements of 112 first paragraph, and pursuant to 35 U.S.C. 111 (see above) you need a drawing if required to understand the invention.
The historical trouble with provisional patent applications deals with the fact that the Patent Office does not examine provisional patent applications and all that is required is something attached to a provisional patent coversheet. In other words, if you attach a provisional patent application coversheet to one or more pages and submit the appropriate fee you now have a patent pending and you will receive an official filing receipt from the Patent Office. This means that provisional patent application quality varies widely from good to bad to outright ugly applications that do real damage.
The fact that provisional patent applications are not reviewed by the Patent Office means there are seemingly no consequences for a deficient provisional patent application.
BUT THERE ARE !
THESE WILL COME OUT DURING LICENSING OR LITIGATION IF THE OPPOSING PARTY KNOWS WHAT HE IS DOING....
Describing your invention COMPLETELY AND ACCURATELY is absolutely critical in a provisional patent application.
For many, a provisional application is seen as a low-cost mechanism for claiming a priority date and for delaying the eventual higher cost of drafting and filing a non-provisional application. More sophisticated parties also use a provisional application as a way to shift the patent term back by one year. One problem with the cost-savings approach is that provisional applications only serve their purpose if they include a sufficient disclosure to protect the eventual claims.
I provisional patent applications can be a very useful tool, but only when they are done right. When provisional patent applications are done poorly you not only don’t get any benefit, the filing potentially demonstrates that as of that moment you were not in possession of an invention, which could be catastrophically bad.
Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention had not ripened past the idea stage at the critical moment the invention was memorialized at the time of filing the provisional patent application. Therefore, it is critically important to understand what is required in a provisional patent application .
Drawings in a Provisional Patent Application
There is a popular misconception about drawings in a provisional patent application. Many believe that that drawings are not necessary in a provisional patent application, and some non-attorney services and courses suggest that drawings are not required. Apparently the belief is that the requirements for provisional patent applications are different than for non-provisional patent applications. This is simply not the case. Yes, provisional patent applications require fewer formalities and the focus can be on the disclosure rather than the form of disclosure, but the disclosure must be as complete as a non-provisional patent application in order to provide a useful priority date. Thus, if drawings are necessary to understand the invention they are absolutely necessary in a provisional patent application.
The relevant statute that defines this requirement is 35 U.S.C 111(b), which says:
b) PROVISIONAL APPLICATION.-
(1) AUTHORIZATION. A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include-
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
For those not thoroughly marinated in patent law the best rule of thumb is that drawings are ALWAYS required. This is an overstatement, but not by much. Yes, there are exceptions, but 35 U.S.C. 113 says drawings are required if necessary to understand the invention. In my experience the only inventions that are not better understood with drawings are chemical compounds, because the formula tells the whole story.
MPEP 601.01(f) says that for the purpose of awarding a filing date, a patent application that claims a method does not need a drawing. Notwithstanding, I would greatly prefer that newbies read that as the United States Patent and Trademark Office being extremely lenient in their interpretation of 35 U.S.C. 113. The reality is that even a method can be depicted in patent illustrations, and really should be. A picture really is worth at least a thousand words in a patent application and is a great way to expand upon a written disclosure to provide additional information about the invention.
A Complete Description
Drafting a patent application is not an easy task and those that take advice on patent law or drafting patent applications from those who are not patent attorneys or patent agents typically get bad advice. Non-attorneys and non-agents just don’t understand the law. Whether they are being malicious or are just not well enough versed to know that what they are saying is nonsense is really of no importance as far as you the inventor is concerned. The damage that will be done is the same regardless of benevolence or lack thereof. Follow bad advice and you suffer the consequences just the same whether bad advice was handed out maliciously, intentionally or as the result of a lack of understanding.
Now don’t get me wrong, provisional patent applications ought not to be feared as they are in some circles. Having said this, however, you absolutely need to know that the description of the invention needs to satisfy the disclosure requirements of 35 U.S.C. 112 first paragraph as of the date it is filed. In fact, in order for any patent application to be a useful priority document it must satisfy the requirements of 112 first paragraph, and pursuant to 35 U.S.C. 111 (see above) you need a drawing if required to understand the invention.
The historical trouble with provisional patent applications deals with the fact that the Patent Office does not examine provisional patent applications and all that is required is something attached to a provisional patent coversheet. In other words, if you attach a provisional patent application coversheet to one or more pages and submit the appropriate fee you now have a patent pending and you will receive an official filing receipt from the Patent Office. This means that provisional patent application quality varies widely from good to bad to outright ugly applications that do real damage.
The fact that provisional patent applications are not reviewed by the Patent Office means there are seemingly no consequences for a deficient provisional patent application.
BUT THERE ARE !
THESE WILL COME OUT DURING LICENSING OR LITIGATION IF THE OPPOSING PARTY KNOWS WHAT HE IS DOING....
Describing your invention COMPLETELY AND ACCURATELY is absolutely critical in a provisional patent application.
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