Frequently I hear the misstatement that one can just submit some notes and pictures of one’s product in a provisional patent application. People think this is so because the application is “informal” and will not be examined by the patent office. Unfortunately, I have seen multiple situations where an entrepreneur had an inadequate disclosure because “Someone said I could just submit my notes and sketches and I’m covered.” WRONG! Even though provisional patent applications are not directly examined by the patent office, the provisional should be thought of as a “patent-lite” and prepared diligently.
The goals of a provisional patent application include securing a filing date, which is a critical date in the process. Sufficient technical disclosure should include enough detail to disclose any sold or publicly used versions of the product, support the claims and description of the future nonprovisional application, and support arguments which distinguish the product from the prior art. Failure to disclose adequate information can place the filing date or the scope of patent protection in jeopardy.
Imagine the following scenario:
- Inventor creates a product on 1/1/10.
- Inventor publicly demonstrates the product on 6/30/10 to promote the product, thus starting a one year period in which the inventor must have a filing date.
- Inventor files an insufficient provisional patent file on 1/1/11.
- Inventor files a thorough nonprovisional patent application on 1/1/12.
- The patent office reviews the nonprovisional patent application on 1/1/14 (it is common for a couple of years to pass before examination) and determines that the invention as claimed in the nonprovisional patent application is not supported by the provisional patent application.
One possible result is that the effective filing date is now the filing date of the nonprovisional patent application, which is 1/1/12. That filing date is more than one year after the inventor publicly used the product, thus the inventor is barred from receiving a patent (Even if the bar to patenting did not exist, any relevant technology created between the filing date of the provisional and the nonprovisional can now be prior art). Another possible result is that the issued patent is limited in scope to what was sufficiently disclosed in the provisional, thus it has less less value.
Don’t fall prey to the myth and take great care in the preparation of your provisional patent application.
