Provisional Patent Applications- Quality Verses Cost Issues Explained
One key point to understand regarding our Provisional Patent
Application (Provisional Patent Application) practice
is that we recognize that not all clients are willing or capable
to invest upfront
the full cost of
a non-provisional
Utility Patent Application. Although we urge you to
have us prepare
a non-provisional
Utility Patent Application for you, we are willing to
accommodate your
economic strategy with a customized Provisional Patent
Application approach that both educates you
to the risks and maximizes the effect of what you can afford to
invest.
Another key point to understand is that when we talk about a
better, average, or
lesser quality Provisional Patent
Application we
mean to impart the general expectation that the less time spent
on developing the
provisional specification,
the less likely that it will contain the necessary information
to support the disclosure and/or claims in
the future non-provisional
Utility Patent Application. This lack information could
limit the claim scope (e.g.,
no searched prior-art to design around) or give rise to gaps in
the specification (such
as missing alternative embodiments) that would weaken a
resulting patent if it ever
went to litigation (albeit
extremely unlikely). Another important factor that often
affects claim scope,
arises from the fact that the current best Patent Practice is to
write the claims
first, and then draft a minimal specification that
fully supports the claims,
which is the opposite of how the Provisional Patent Application
practice proceeds where the specification is
drafted first, and claims are
done later in the Utility
Patent Application. Another benefit of drafting the claims first,
is that often it drives added, and/or more precise disclosure in
the specification.
You should keep in mind that there are two main levels of
invalidity in the patenting
and enforcement process, the first is when the Patent
Examiner looks at the Utility application (we refer to
this as "minimum
legal validity", or "examination validity"), and the second is
when
a Patent Lawyer challenges the issued patent
in court litigation (let us call this "litigation
validity").
Regarding examination validity, a common quality issue may arise
is the way an invention
is described in the disclosure of
a cost focused
Provisional Patent Application. Although it is true that
a Provisional Patent Application may be written in plain-English,
problems
may still arise where the language used causes vagueness or
contradictions, which
may result in a rejection during examination of
the later-filed Utility
Patent Application, or legal problems during litigation.
Our Revision level of Provisional Patent Application
service is intended
to clean up the common examination related
problems, and the Drafting Basic Provisional Patent Application
service takes
care of the examination and basic litigation validity
related problems.
Fortunately, however, regarding our cost focused
Provisional Patent Application services, because we ensure that
the provisional application meets the minimum legal
requirements, the foregoing
issues of quality due to low cost do not tend to prevent you
from receiving a patent,
but might weaken the awarded patent’s strength and value.
Bay Area IP is relatively unique in the patent industry in
working with our clients
to achieve their optimal balance between cost and quality. The
vast majority
of patent firms avidly avoid this trade-off for good
reason- it is tough
to define the uncertainty!