Provisional Patent Applications Part II – Types of Provisionals

Written by: Larry Drasner

Partner

In Part I of provisional patent applications, we explored some of the basic aspects of provisional patent applications. Legally, patent law and procedures recognize provisional applications as a single category of patent application. Within that overall framework, however, practitioners have adapted the general category of provisional patent applications into different types depending upon inventor or applicant circumstances.

As detailed in Part I, a provisional application is a type of patent application that permits the applicant to obtain a filing date without having to meet the various formalities of a non-provisional application. Formal patent claims, drawings, specific application sections, and the like are not required. Practitioners, therefore, refer to one type of provisional patent application as an “informal provisional patent application”. Sometimes, informal provisionals are referred to as “quick provisionals” or “cover sheet provisionals”.

Informal provisionals take advantage of the lack of formal requirements for provisional patent applications by simply being a re-packaging of invention records and development documents essentially as is, perhaps with some minor format editing and a simple claims set, which is then submitted to the Patent Office to obtain the priority filing date. Data, drawings, and descriptive text simply may be taken from the existing invention documentation. On the other hand, practitioners refer to a second type of provisional patent application as a “formal provisional patent application”, which essentially is indistinguishable from a non-provisional patent application that would be examined by the Patent Office. A formal provisional, therefore, has all the standard sections common in a patent application, line patent drawings, and a full specification ending in a full claims set.

So – when is it advisable to file an informal provisional versus a formal provisional? A first consideration is time, especially whether an imminent disclosure is upcoming.

Are you going to a trade-show this weekend? Is your best customer pushing for a prompt meeting to fulfill an important need? Is your marketing department preparing a press release on upcoming product offerings? Before these types of disclosures are made, the provisional application should be filed. When time is short, the informal provisional provides an expedient way to get that priority filing date prior to any disclosure.

A second consideration is budget. The patent procedures do not distinguish between different types of provisional applications, and therefore the government fees are the same. That said, because the informal provisional lacks all the detailed features of a non-provisional patent application, informal provisionals are easier to prepare and therefore attorney fees are significantly less, often being a quarter of the fees or less as compared to formal provisional applications.

Stage of Development

Sometimes, a broad concept is demonstrated to be viable, but many significant details of implementation still may be under development. In such case, an informal provisional may be preferred, which permits establishing a priority filing date for the basic concept without investing significant time and expense in preparing the provisional patent application while the implementation details are worked out and finalized.

From the above, it may seem like informal provisionals have major advantages over formal provisionals based on the relative time and expense to prepare. A critical aspect of all provisional patent applications, however, is that to retain the benefit of the early provisional filing date, the claims that define the invention in the subsequent non-provisional application must be supported by the disclosure of the provisional application. Accordingly, the closer the content of the non-provisional application matches the prior provisional application, the less likely claims support will be an issue. Formal provisionals by their nature more correspond to the non-provisional patent application to provide the requisite claims support.

In addition, although informal provisionals are less expensive to prepare and thus invoke less upfront expense, they require substantial effort to convert to the later non-provisional application. Formal provisionals, being comparable to the non-provisional already, are readily converted. Accordingly, when time is not an issue and the invention is well developed, a formal provisional may provide better long-term cost effectiveness and strong support for the claims of the subsequent non-provisional application.

Stay tuned for Part III, where I will discuss the details of the conversion process that should be considered in detail.

Questions in the meantime? Contact me for a complimentary discussion.