Disadvantages of filing a Provisional Patent Application (PPA)
I’ve had a number of questions from people in this forum and from colleagues about Provisional Patent Applications (PPAs). Many people, unfortunately, see PPAs as a quick path to a patent — and are not aware of the pitfalls. So I thought I’d take a moment here to describe two significant disadvantages of a Provisional Patent Application:
(1) Many times (unfortunately too many times), the PPA applicant uses the PPA as a shortcut, and doesn’t do as thorough of a job at researching and disclosing information about his or her invention as he or she would with a traditional patent application.
(2) This is similar to (1), in that a PPA doesn’t require the applicant to file Claims. To many, Claims are the “heart” of the patent application. In many cases, writing the Claims greatly influences how how the rest the patent application is prepared. They go hand in hand. Without the need to draft Claims, the applicant may or may not prepare the PPA disclosure in such a way that solid, supportable Claims can be written later in the full application. And that would be catastrophic.
I can’t underscore point (2) above enough. For individuals who have never written a patent application before, it is very difficult to have a firm grasp of the critical nature of the Claims — and the very precise interdependency of all the elements of a patent application. I would guess that someone filing a PPA by him or herself, without having gone through the process of at least one full-fledged patent application prior, the likelihood of being able to prepare solid Claims in the full patent application down the road are extremely slim. Said another way, the chances for a catastrophic problem with the full patent application are very high.
There are other reasons that I don’t particularly recommend a PPA for a first-time inventor — but some of these are more technical in nature and would be difficult to describe here.
Sure, for experienced inventors with a number of patents / patent applications under their belts, a PPA can be a useful tool. For instance, a PPA saves upfront costs. It also enables the invention to immediately be marketed as “Patent Pending”. And a PPA gives the inventor up to one year to research whether or not the invention may be profitable in the marketplace…and thus one year to determine whether he or she would want to file a full-fledged patent application. But, as I said above, I think the likelihood that a first-time inventor can take advantages of these benefits is slim. That’s just my opinion, based cases that I’ve come across. Other people may think otherwise, and I certainly respect those opinions.
I hope this information is helpful.
– Eric
Hi Eric,
I read your information and it’s Great! It’s not easy to find information about how to do this yourself with out the overhead of agencies looking to collect those up front fees. You have done a great job outlining some of the steps on how to walk through this and save mega dollars. Are there any other information you can share for the do it yourself type guy?
Hi Eric,
I had filed a provisional last year and getting ready to file Non-Provisional application. As you discussed in this entry I did not do a good job of structuring the diagrams and specs as per the claims I want to put in my Non-Provisional. I have disclosed all the information that i wanted to disclose in provisional application. Disclosure is fine but the presentation of specs and diagrams I would like to change. I am not adding any new content but I would like to change the order/content of diagrams and specs. Can I do that without loosing the benefit of filing date of provisional app. I would appreciate if you could let me know.
Hi Arjun. Thank you for question.
As you probably have read elsewhere in my site — such as in my post at http://patent-your-inventions.com/?p=36 — I am really not a big fan of Provisional Patent Applications (PPAs). Your question touches upon one of the key reasons why.
The order and content of your invention’s diagrams and specs may be critical to your upcoming patent application. If so, and if you need to express your invention in a different way (including in your drawings), then you may (unfortunately) lose the benefit of the filing date of the PPA. Because of all of the possible variables, there is really no way for me to tell how things interrelate in your specific instance.
In general, I find most first-time inventors have a near impossible challenge to predict and write the precise content necessary in a PPA that will be useful for the actual patent application. Since no new subject matter (invention details) can be added once the PPA is filed, inventors tend to get stuck — particularly when trying to write the actual patent application’s Claims.
The issue with your drawings is a tough call. Look at the situation with a critical eye and consider whether or not your changes amount to adding (or changing) the subject matter of your invention. Simply re-numbering or re-ordering your drawings would likely pass muster. More than that, and you may be delving into a gray area.
I hope these insights are helpful. I wish you the best of luck with your upcoming patent application!
– Eric