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Provisional Patent Applications: What You Need To Know, Part 9

Provisional Patent Application + Greedy Patent Attorney = Useless Provisional Patent Application.

These scams create a problem of sticker shock. According to the AIPLA (American Intellectual Property Law Association) 2015 survey, the median cost of having a patent attorney draft and file a provisional patent application ranges from $2,000 to $6,000. It is just too difficult for many startups and entrepreneurs to pay this price after seeing so many advertisements on Google or in magazines that promise to prepare and file a provisional patent application for just $100 to $3,000.

This is where the greedy, lazy patent attorney comes in. There are some patent attorneys who could do a good job, but choose not to. All that have to do is to quickly draft something that could fool the untrained eye into believing that the provisional patent application will protect their invention. Then they can charge $1000 – 4,000 and pocket the difference.

These sleazy patent attorneys know that they will not be caught because provisional patent applications are not published, most provisional patent applications are not relied on or examined, and even if they are, over 75% of startups fail. I guess it’s just too tempting for them to pass up.

Plus, if the startup makes it, they might send them more work! And why not? The startup still has no idea they got screwed!

To avoid being tricked, you need to understand how a provisional patent application works.

Provisional Patent Applications: How They Protect Your Invention

The only purpose of a provisional patent application is to establish a priority date for filing a non-provisional patent application, such as a utility patent application or a PCT application. A provisional patent application will not issue as a patent and is not examined by the USPTO. Instead, the provisional patent application acts as a “place holder” that proves that you invented your invention before someone else patents or publishes it right out from under you.

The only time that anyone, including a USPTO examiner, ever looks at a provisional patent application is when there is “intervening art.” This is where someone else publishes something, publicly discloses something, or files a patent application on something similar to your invention after you file your provisional patent application, but before you file your non-provisional patent application. If the USPTO examiner cites that publication, disclosure, or application against you, then you can rely on your provisional patent application to prove that you filed your invention first and that you are therefore entitled to get a patent.

The only purpose of drafting and filing a provisional patent application is to establish a priority date. There are three things that you need to know about what it takes to establish a priority date.

  1. The claims are the only part of a patent or patent application that protect your invention.
  2. To establish a priority date for a claim, your provisional patent application must teach a person skilled in the art how to make and use your invention as broadly as it is claimed (the enablement requirement).
  3. To establish a priority date for a claim, your provisional patent application must convince a person skilled in the art that you actually conceived of the claimed invention, as written, on or before the filing date of the provisional patent application (the written description requirement).

In practice, a USPTO examiner will look at the claims of your non-provisional patent application and then back at your provisional patent application to see if there is near verbatim support. In other words, the provisional patent application will only protect your invention if the examiner can find the EXACT language of your claims, as amended, in your provisional patent application. Even a slight difference in wording can cost you your priority date. If the examiner does not find adequate support for your claims in your provisional patent application, it will be like you never even filed a provisional patent application.

Summary: The only purpose of a provisional patent application is to establish a priority date for the invention that you will claim. To establish your priority date, your provisional patent application must provide near exact support for your claims, along with a description of how to make and use your claimed invention.

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