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Under certain circumstances there are legitimate reasons to use the provisional patent application. However, the overuse of provisional patent applications lends itself to future problems. Clients should not assume they should file a provisional patent application. THE PROS 1. Extends the term of a patent by one year. Think about whether the product may still be valuable in twenty years. If so, this may be a valuable strategy. Examples may be pharmaceutical patents, which are often most valuable towards the end of their term. 2. Provides evidence of inventorship. United States patent law says that the inventor who proves they were the first to invent is the winner. A provisional patent application provides good evidence of inventorship. 3. Extending the one-year disclosure or public sale grace period. In the United States, an inventor has one year from disclosing (publishing an article, etc.) or offering their invention for sale to file a patent. This can be a provisional or non-provisional. 4. Retaining world-wide patent options in the face of a disclosure. Many times an inventor will come to us, stating that they are giving a presentation that week. If the inventor wants to retain their foreign rights, a patent must be filed. In this instance, a provisional patent provides a great strategy. THE CONS Many independent inventors are strapped for cash. Inventing, marketing and selling your idea costs money. Because of this, many inventors try to contain costs. A provisional patent application allows an inventor to file a patent for the reduced cost of $80 for an individual inventor (assuming they can meet certain requirements) rather than that of a non-provisional patent application ($370). The real “savings” is that a provisional is easier to file, thus saving the independent inventor from lawyers or patent agent fees. This allows the inventor to defer paying between $2,000 and $10,000 for an attorney to draft the patent and file paperwork. In reality, though, the provisional patent can end up costing the individual inventor much more than they originally thought and bargained for. A non-provisional patent never matures into a patent and is never prosecuted (or looked at for to see if it meets the requirements for a patentability). Therefore, this postpones the issuance of a patent for a year. Another issue is that the non-provisional filed after the provisional application may not claim any new matter. This causes problems because often the process of drafting a non-provisional patent results in a much broader patent. The main reason for this is that in drafting the claims, the true invention is revealed. This is why most patent agents and attorneys start by drafting the claims of the patent first. Patent agents and attorneys are skilled at trying to see other possible uses and working with inventors to see alternative embodiments of the invention. Often when the inventor is forced to explain their invention to others, many related inventions and ideas will come up. These are often left out of a provisional patent. This can be a costly mistake. The inventor, a year later, wishing to convert their provisional application to a non-provisional may decide to see a patent agent or attorney. At this point, the patent attorney is left with no choice but to file a non-provisional patent and file a related patent on any new matter (either an entirely new patent, divisional, etc.). This results in a patent based on the subject matter claimed in the provisional application and a separate patent on the new matter. As you may have guessed, two patents cost twice as much. Not only twice as many filing fees, but twice as many office action responses, twice as many issue fees, and twice the maintenance fees. This is a costly mistake. Think through the cons: 1. The total costs are increased. Your client must pay additional fees to the USPTO, and any patent agent or attorneys’ fees for filing. 2. You cannot add new matter. Your client is left with that which is claimed in the provisional application. 3. Ammunition for patent litigation. Any challenge to the validity of a resulting patent will call into question whether the specification of the provisional patent fully supports the issued patent. This causes many problems, because independent inventors will turn in papers as patents, and then try to create a patent out of it. It can be tricky and result in an invalid patent. 4. Loss of trade secrets. Once a patent issues, the provisional patent is public information. Therefore, anything included in that application is now free to the public and any trade secrets destroyed. SUMMARY The two most compelling reasons to utilize a provisional application are: (1) when the market is currently uncertain, yet capable of being determined within a year; and (2) the inventor is disclosing their invention very soon (say within a few days) and wishes to retain foreign rights and provide themselves with some protection. For the amount saved, versus the risk of the possible costs incurred, the best bet is to really analyze why you are using the provisional patent. There should be a good reason, other than to get a patent filed for cheap. Another suggestion is to see if you can file a “quality” provisional, that is an application that meets the requirements of a non-provisional application. This is to say that it is well drafted, has claims and conforms to the UPSTO patent requirements. If your client is concerned about the cost, this strategy may be more expensive up front, but could end up protecting an invention, while avoiding hassles and saving money in the long run. Jennifer Meredith is a Registered Patent Agent. She can be reached at [email protected]or by telephone at 212-702-9680 for free information. You can view her Web site at www.jennifermeredith.com.

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