The Perils of Provisional Patents

Contrary to many patent professionals, DSL Patents generally do not like or recommend filing of provisional patent applications, especially as a routine practice. In our years of experience, we have encountered many cases where an inventor, having filed a provisional patent application, feels as if he or she has been given a “get out of jail free” card and is free to discuss his or her invention with impunity. The difficulty is that when it comes time to filing the regular patent application, the invention that is actually documented, has features that were not disclosed in the original provisional application. If this is the case, and these features have been disclosed by the inventor prior to filing the regular application, he or she may not be entitled to a monopoly on these features.

The problem is compounded by the fact that many inventors, especially academics, are innately drawn to collaboration and the free exchange of ideas. Such collaboration may result in advances in the technology that makes its way or may even become an integral part of the invention embodied in the regular patent application. However, this will make the collaborator a co-inventor, with rights in the patent monopoly.

Some inventors, especially those who are in start-up mode, view the reduced costs of filing a provisional application as compared to a regular application as a strong reason for filing a patent application. But the cost savings are illusory. First, such inventors are paying an additional fee, which is a significant percentage of the cost of drafting a regular application, to delay for a maximum of 1 year the costs of drafting a regular application. There is no additional benefit to the provisional application, which is not examined and which dies at the conclusion of the provisional period, other than this deferral. The reason the costs of preparing a provisional application are less, is because some material is omitted. If the wrong material is omitted (for example, some patent professionals do not draft any claims, at their client’s peril), some or all of the inventor’s rights may be irretrievably lost for the sake of a small and very expensive deferral.

Finally, every inventor who considers filing for a provisional patent application to avoid rushing the preparation of a regular application in light of a deadline, has the best intentions of following up well before the expiry of the priority year, to prepare, in a non-frenzied fashion, the regular application. In our experience, however, the business of growing a business intervenes and the regular application is not commenced, much less completed, until the non-extendible 1 year provisional period deadline looms, resulting in a much more-frenzied process, albeit delayed by about a year.

If the situation calls for filing a provisional application, we are able and willing to do so. Sometimes, however, the situation is that the patent professional needs more time than is available to prepare the patent application. We believe that in many, if not all cases, DSL Patents can prepare a complete, correct and excellent regular patent application in the time allotted, thus avoiding the pitfalls (and the additional unnecessary cost) of a provisional patent application.