How do I file Provisional Patent? 17 Answers as of February 13, 2013

I went to a local IP law firm and tried to get a provisional patent application. The attorney told me that it is wise to get formal patent application, because it requires some amount of time for him to do search and get patentable claims right. He said it won't be that much cheaper (or faster) on provisional filing. Is it true? I need a second opinion here. I heard that provisional patent could be done in DIY way. This attorney's answer is so far away from it. He seemed confident that others were doing it wrong.

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TechLaw LLP | Ross A. Epstein
Provisional patent applications definitely have their place in the patenting process. However, they typically are reserved for emergency situations when a disclosure is imminent and something needs to get on file to preserve rights to the invention. If you have the time, and the financial resources, it is always better to do a non-provisional filing. The problem with a provisional application is that when it comes time to convert it into a non-provisional, you can only claim that which is disclosed in the provisional?s specification. So to the IP attorneys point, a good provisional has a specification which should not be that different than a non-provisional. Where I think the IP attorney consulted is incorrect is that a provisional is typically less expensive if for no other reason there are no claims needed to be created which is the true art of patent application drafting. We agree with the advice already received that provisional applications should be of used sparingly, but financial realities and timing can make them the best choice at times.
Answer Applies to: California
Replied: 2/13/2013
DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
I think the local patent attorney is mostly correct. A big problem that an inventor runs into with a typical "DIY" provisional application is not with was put into the provisional application, but rather what was not put into it. The attorney may be suggesting that if you're eventually going to have a detailed and thorough description and claims for the invention, it's best to include those as early as possible, and preferably into the provisional application.
Answer Applies to: Ohio
Replied: 2/12/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
You can DIY file a provisional and or a non-provisional patent application. The information is available at USPTO.gov. A provisional application should contain everything that a non-provisional application contains except for the claims. Most DYI like Legalzoom and others that offer a provisional application for less than $1,000 may not include all of the detailed description to support a future filed non-provisional application. The DIY provisional applications will give you a filing date and get a "patent pending" serial number. The US patent office fee for a provisional application is $125 for an individual. If the provisional application is prepared correctly the additional cost to file the non-provisional application should be another 25%. For most DIY the cost to convert the provisional to a non-provisional is 3 to 10 times more. The real advantage of the provisional application is it gives you one year to make improvements or to determine if you can sell or market the product before you file a non-provisional application. You should either do a legalzoom provisional application to get a DIY type provisional application or locate another IP law firm that will prepare a proper provisional application. Let me know if you have any questions in regard to this issue.
Answer Applies to: California
Replied: 2/12/2013
Law Office of Mathew R. P. Perrone, Jr. | Mathew Roy Patrick Perrone, Jr.
That is my standard answer on a provisional application. If it is not in good form, it does not help the full application much.
Answer Applies to: Illinois
Replied: 2/12/2013
Eminent IP, P.C.
Eminent IP, P.C. | Paul C. Oestreich
As there are no formatting requirements for a provisional patent application and claims are not required, it is possible to file a provisional patent application, *pro se*. Because there are no formatting requirements, or prior art search or claims required, a provisional patent application can and should be much less expensive than a non-provisional or utility patent application. It is a relatively simple matter to file a provisional patent application online with the Patent Office. But, it requires some knowledge of the right forms and use of the Patent Office Electronic Filing System and a credit card for payment of a filing fee. However, the provisional patent application is only as good as what it discloses. Ideally, it must disclose enough written description that it enables one of skill in the art to practice the invention claimed in your subsequent non-provisional patent application. Furthermore, the provisional application specification and drawings should provide written support for the claims you intend to assert in the subsequent non-provisional patent application. So, to the extent that the provisional application is lacking in this written support, you run the risk of losing the priority date of your provisional application to intervening prior art that predates your non-provisional application filing date. For these reasons alone, you are best advised to have a patent attorney prepare and file your provisional patent application. Though a *pro se* applicant may successfully file a provisional patent application, such an applicant should not attempt to file non-provisional patent application. This is because the Patent Office rules and requirements are very technical in nature, constantly evolving and thus, not readily apparent to the *pro se* applicant. Additionally, there are many patent application drafting strategies that rely on a solid knowledge of the case law relating to patents that have been litigated in order to avoid pitfalls and maximize allowable claim scope.
Answer Applies to: Utah
Replied: 2/12/2013
    Mark S. Hubert PC
    Mark S. Hubert PC | Mark Hubert
    I currently charge around $1,000 to $1200 for the preparation and filing of a provisional including the $125 filing fee. There are pros and cons to submitting a provisional. I would say that if you need a year to get together the money to file a utility application, then file a provisional now. A utility generally runs at a min about 4 times the cost of a provisional. Yes you can do it yourself - much in the same way you can take out your own appendix. Possible but not recommended.
    Answer Applies to: Oregon
    Replied: 2/11/2013
    Ochoa and Associates
    Ochoa and Associates | Susan Ochoa Spiering
    I agree with the attorney that gave you this advise. It seems provisional applications are being used very lax by some. However provisional applications are filed for numerous reasons - some business, some technical, some other. It still takes about the same amount of time to prepare and file a provisional than it does a regular/non-provisional application. And if you chose to convert the provisional application within the year, you want there to be as few changes between the two applications, since any new information will have a new filing date, which can trigger others issues for you. Many people do 'do it yourself' and if this is the only avenue for you, and you believe the right thing to do for your business, then proceed. There is a helpline at the USPTO that assists inventors with questions or comments. You can leave a message and they'll call you back within a few days. Note that if you've disclosed your invention to anyone without a non-disclosure agreement, you have one year to file the application before you lose your ability to file and protect. good luck.
    Answer Applies to: Texas
    Replied: 2/11/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    You can file anything with the government and call it a provisional patent application and people do all the time. Sometimes it works out for them and sometimes it does not. Some attorneys don't do a good job of preparing and filing patent applications, provisional or otherwise, and non-attorneys only rarely do it right. If you plan on doing it yourself, you will make mistakes and probably serious ones. If you are set on doing that, you should at least go buy a book on how to write an application. I believe NOLO Press has a decent one. The patent process is long, complicated and expensive and anything that happens in the process has a chance of impacting the overall value of the patent or the chance that it will even be allowed. If your technology is something that you really believe in, you should find the support for it so you can do it right. You don't want to end up betting the future of a very profitable company on a patent that you wrote yourself.
    Answer Applies to: Utah
    Replied: 2/11/2013
    Turner Padget Graham & Laney, P.A. | Bernard S. Klosowski, Jr.
    There is no such thing as a "provisional patent". There is a provisional patent application (PPA) but a PPA itself will never become a patent. In the United States, a PPA essentially "buys" an applicant time. If an applicant later determines that a formal "utility" patent application* is worth additional investment, then before the one year anniversary of the PPA's filing date passes, the applicant can file the utility patent application and claim priority to the PPA's filing date. The utility application - unlike the PPA - eventually will be examined by a U.S. patent examiner and a U.S. patent may issue from the utility patent application if it contains an allowable claim. A PPA is therefore just a placeholder that is typically filed to determine commercial feasibility of an invention, to further develop the invention, etc., or a PPA may be used in an emergency (for instance, if the applicant realizes that a disclosure deadline or sale date is approaching within day(s), a PPA can be relatively quickly filed to preserve the priority date). A very real risk with a "DIY" PPA is that if the PPA is inadequately written, the utility may not be able to "reach back" to the PPA's filing date to support its claims. This becomes a problem if other patents, publications, or other prior art surface between the PPA's filing date and the filing date of the utility patent application. If the PPA doesn't properly support the later filed utility claims, then the PPA can't "get behind" the prior art, and the claims in the utility may be rejected in view of that intervening prior art. In short, a PPA is susceptible to the old "garbage in, garbage out" theory. A detailed PPA may avoid this fatal problem, which is why a PPA may not be so "cheap". A search of the prior art (e.g., other patents or publications) is not a requirement for a PPA or a utility application, but a search can provide an idea of whether an invention is patentable in view of the prior art, and eventually, the search results can help a patent attorney write the claims in the utility to avoid the known art. (Although it is beyond the scope of the question, a search may also help avoid infringement issues if the applicant decides to make and sell a product or service covered by its own claims.) The United States Patent and Trademark Office (uspto.gov) has information about PPAs and filing mechanics. Good luck. *There are other types of patent applications such as plant applications, but the majority are utility patent applications.
    Answer Applies to: South Carolina
    Replied: 2/11/2013
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    You received very good and wise advice. The same care must be taken for a provisional as for a utility application. This is not a DIY job. Most DIY patents are not worth the paper they are printed on. Many people who are not lawyers or who distrust lawyers wrongly perpetuate the myth that a DIY provisional can be done cheaply. This is wrong. There are some good reasons to use provisional but saving money on legal costs is not one of them.
    Answer Applies to: New York
    Replied: 2/11/2013
    Michael M. Ahmadshahi
    Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
    Provisional applications should be much faster because it's only a summary of the invention without the need to write any claims. It should also be much cheaper because it shouldn't take too much time to prepare. Whether or not it can be done DIY way depends on the complexity of the invention.
    Answer Applies to: California
    Replied: 2/11/2013
    AdamsIP, LLC | Hunter Adams
    Although there are fewer formal requirements for a provisional patent application, it must fully encompass what your later filed utility applications claims. If not, you will not be able to rely on the filing date of the provisional application for providing support for the later filed claims. However, as a rule of thumb, a provisional patent application is typically much less expensive than a non-provisional patent application. At many firms it will be less than half the cost. Of course, if you file a provisional application, you will still need to file a non-provisional within 1 year, thus it may end up being cheaper going straight to the non-provisional. I would not advise a DIY provisional patent application. You will risk not being able to claim priority based on the application, thus defeating the purpose of the provisional patent application in the first place. Further, you could risk a public disclosure and bar under section 102, or at least a bar from filing in many other countries. One final thing to consider is having a patentability report done for your invention. We perform these reports for clients before filing any patent applications. This allows us to have a better gauge on the possibility of the patent issuing. The report has many other benefits as well. No patent issues are one size fits all. The scope of the claims and the patent prosecution strategy will vary based on the client and/or business.
    Answer Applies to: Alabama
    Replied: 2/11/2013
    Tran & Associates | Bao Tran
    You should get patent application as soon as you can to prevent others from copying you. This is important as we move into the First to File era.
    Answer Applies to: California
    Replied: 2/11/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    It is not overly difficult to file a provisional patent application by yourself if you are familiar with the process because the USPTO does not require specifics about the invention. It essentially holds your place in live by providing minimal protection for your product while you finish developing it. However, you have only one year after the provisional filing to submit a formal patent application with complete details. If you fail to submit the formal application at that time, all protection for your product ceases. It sounds like your attorney is trying to save you both time and money by recommending the formal application.
    Answer Applies to: Nebraska
    Replied: 2/11/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    A provisional application CAN be a do it yourself project - BUT - it must comply with the patent laws - especially Section 112. That is why patent attorneys advise against DIY attempts - as most inventors cannot fully comply with the legal requirements. There are guides on the Internet for how to write a provisional patent application - so I suggest you read them.
    Answer Applies to: Massachusetts
    Replied: 2/11/2013
    Shimokaji & Associates
    Shimokaji & Associates | Michael Shimokaji
    A provisional patent application does not necessarily need to be done in the same way as a "formal" non-provisional application. Provisional applications are often used due to budget constraints.
    Answer Applies to: California
    Replied: 2/11/2013
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