Notorious: provisional patent application followup

This article answers two initial concerns by readers of my article on United States provisional patent applications. The first concern addresses the generally held belief that a provisional application is a smaller and therefore a prudent initial investment.

A provisional application must be substantively identical to the corresponding utility application for quality and quantity of technical information about the invention, its creation and its use. If a provisional application is significantly less expensive than its utility application counterpart, then one should consider whether the provisional applicant is sufficient under United States patent law. The business owner/inventor should not invest in a U.S. provisional application that is ineffective to provide an earlier application filing date. The same is true for a provisional application that is technically incomplete when converted into an identical utility applicant. Unfortunately, the patent office does not exempt inventors with budgetary constraints if United States patent law requirements are not met.

What exactly are these requirements? This question leads us to our second concern: sufficiency of a provisional application for what is known as the enablement requirement of United States patent law. There are two additional requirements for provisional or non-provisional applications: written description and best mode but here we address enablement. For enablement, the patent must contain sufficient technical information so that one of average skill in a particular technology can produce the invention without endless guesswork.

Theoretically one could file a provisional application that meets all three requirements, and yet is not identical to a corresponding utility application. However, based upon my hundreds of consultations throughout years of practice, this is not how the vast majority of provisional applications are written. Instead, the provisional application filed in the U.S. is often filed by an individual or business who believes that a single page of technical description will avoid expenses and yet completely protect the invention in the United States.

This misconception is tragically far from the truth. Because provisional applications are never examined, inventors remain unaware that most of their provisional applications are fatally non-enabling under U.S. patent law. This fatal defectiveness often never emerges unless there is a challenge by a third party in an infringement lawsuit. This defect does not generally arise from the claims that could be modified; it arises from insufficient enablement throughout the application and results in the invalidity of all claims. Under U.S. patent law this application-wide defect cannot be cured after filing. Consequently, a courtroom challenger may strategically assert that a provisional application, on which the patentee relies for utility patent validity, is invalid. The result: If the provisional application was invalid, then its filing date is no longer available to overcome a non-extendable United States filing deadline on which the challenged patent depends.

Similarly, if the non-enabling provisional application is converted into a utility non-provisional application, then the examiner or a third party challenger may find it non-enabling under U.S. patent law. Either way those who rely upon a provisional application of two pages, when the complete non-provisional utility application should be forty, will often forfeit their inventions and investments under United States patent law. It should also be noted, when balancing the benefits of filing strategies that many businesses will not file internationally for financial reasons provided in my earlier article addressing international patent enforcement.
© 2011 Adrienne B. Naumann

Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.

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