Common Patent Misconceptions - Myth #5 - Provisional Applications

By Osman Ismaili, November 24, 2020

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #5: Even if my invention is in an early stage of development, I can still file a “quick and dirty” U.S. provisional application

A U.S. provisional patent application can be filed as a “place holder” to secure an early priority date and allows you to disclose or discuss your invention with potential investors.  A provisional application needs to be converted into a full application by the one-year mark and has to be filed individually in each country you are interested in.

Despite the fact that the formality requirements for U.S. provisional patent applications are fairly relaxed in comparison to non-provisional applications, there are still a number of good practices that inventors should keep in mind. In this article, we will explore some reasons why inventors should NOT cut corners when filing provisional patent applications.

Quality of the Provisional Application Drafted

One often hears that a provisional patent application can be as simple as sending the photograph of an idea scribbled on a napkin to the United States Patent and Trademark Office (“USPTO”). While these may still serve as stopgaps at the USPTO, their robustness and efficacy as patent applications are largely problematic.

It is generally an accepted good practice in the industry to file provisional patent applications to be as much like formal applications as possible. When inventors choose to file their provisional patent applications themselves (oftentimes by submitting presentations or academic papers), they might include language that could limit the invention, or generally set themselves up for obstacles down the road.

Enabling Disclosure in Provisional Applications

Another aspect to keep in mind is the fact that provisional applications must still provide an enabling disclosure. That is, they are held to the same standard as non-provisional applications for being able to adequately teach the invention they protect. This is in fact a key requirement in all jurisdictions. For example, section 27(3) of Canada’s Patent Act states that the “specification of an invention must correctly and fully describe the invention and its operation or use as contemplated by the inventor.”

A provisional application which only spells out an idea, but does not teach how to properly implement it, may run into problems later on, including at the formalization stage. Patent Examiners may also assign later claim dates to concepts that did not appear in the provisional application, and only appeared later in its formalization. This is why it is a good practice to ensure that that provisional application describes the invention as fully as possible.

Conversion to Formal Applications

As the provisional applications must be converted into regular applications before the 12-month time period runs out, another important point to remember is that a very rudimentary provisional patent application may be much more difficult to convert into a full patent application than a provisional application that is well-drafted. The rudimentary provisional will undoubtedly require more time, effort and money than if the starting point was a robust provisional patent application drafted by a patent professional. So while the photograph of a napkin with an idea on it may seem appealing initially, it can end up costing inventors a lot more down the road.

At a very minimum, a provisional patent application should be a robust detailed description of the invention. It should teach those skilled in the relevant art how to implement and practice the invention. The description should also describe the invention as fully as possible so that a meaningful set of claims may be drawn from it at the formalization stage, if not at the provisional stage.

Patents are not cheap, but they can turn out to be your business’s biggest assets, so it is worth investing in them and drafting them properly from the start. It is equally important to remember that patent law isn’t simple. It is one of the most complex areas of the law, with numerous potential pitfalls if you aren’t careful. That’s why hiring a professional from the start, who is trained and experienced in navigating the intricacies of patent law, can end up saving inventors a great deal of time, money and trouble in the long run.

If you have an idea that you are considering patenting, please feel free to reach out to MBM for a free consultation.