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What makes a useless provisional patent application?

As many people know, a provisional patent application can be an extremely useful tool. Filing a disclosure of an invention in the form of a provisional application can hold a priority date for the invention for one year. This can allow inventors to explore the market for a product before investing lots of money in a non-provisional patent application. The provisional patent application has less formal requirements, adding to the ability to file an application quickly and cheaply.

There’s a trade-off, though: The provisional application only holds the priority date for your later allowed claims if the claimed subject matter is fully supported by the provisional patent application.

Sometimes, inventors shy away from fully disclosing their invention in the provisional application. Maybe it’s because they don’t want to disclose the “secret sauce” behind their invention. But the limited monopoly given by the patent office is given in exchange for the disclosure of your secret sauce! As a result, all too often inventors use the provisional application to describe in super-general terms the substance of their invention. Later on, in order to fulfill the requirements of novelty and non-obviousness during prosecution, claims in the non-provisional application may not be fully supported by the super-general provisional application.

In other words: the provisional application is useless.

If the application is useless, you lose your priority date. In turn, even if you file a non-provisional application within a year, you may be barred by any disclosure made before filing of the provisional application. Though it may seem counterintuitive, it’s important to have an attorney involved in drafting your provisional application to make sure the provisional application works for (and not against) you.

DISCLAIMER: The information provided is for general informational purposes only. This post is not updated to account for changes in the law and should not be considered tax or legal advice. This article is not intended to create an attorney-client relationship. You should consult with legal and/or financial advisors for legal and tax advice tailored to your specific circumstances.

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