Provisional Patent Application Requirements – Some tips to avoid a Lemon

No one wants to be left with the “lemon” case. But, that’s tough when most IP users don’t actually know what to look for and are essentially blindly dipping in the fruit bowl hoping to avoid the lemon. So, we have provided some pithy truths below about four common provisional patent application myths – enjoy.

Myth 1 – Provisionals can be “Quick and Cheap”

Like that “cheap” hair cut you wish you never had – “a quick and cheap” provisional patent application is a bad look and not as easy to fix as waiting 6-weeks until your hair grows back. You see, a provisional patent specification (the part us Patent Attorneys write) is often the backbone of an entire patent portfolio and the part on which the eventual complete patent specification is built. If the foundation is not correct – the whole house can come crashing down.

The fact is – even though you can “tidy” up (sometimes fully “redraft”) a specification at the complete stage – this is often either not done properly or not done at all as the already written words become affirmed based on a belief that someone at the patent office has taken a look at the specification – they haven’t.

Do not believe much of what you read on the internet – as most of it is US based (still) in a mind set of the old US patent laws that were a first-to-invent system as opposed to the now first-to-file system (under the old US laws you could still contest you were the “inventor” even if your provisional patent application was utter rubbish). Under any modern laws – a provisional patent specification must more-or-less have the same content as a complete patent specification, although we set up the specification slightly differently to allow for changes.

Even IP Australia is trying to convince companies and inventors to invest in professional help, although I did last year see an article quoting the former Director of IP Australia touting the provisional patent application as quick and cheap, silly really. I guess it depends what you want – an enforceable valuable patent right or a potential loss of rights to an invention that should be yours. In my view – it is a must to engage a (good) Patent Attorney to prepare as comprehensive provisional patent specification as you can afford. Period.

Myth 2 – The Patent Office will “Approve” my case

Nope. They won’t. IP Australia will take your money and send you a filing number. They “may” check the title on the document matches the title entered in the
Patent Request. However – no one reviews, approves or otherwise does anything to check your provisional patent application is suitable. In fact, if you like, take a photo of today’s newspaper and submit this as a provisional patent application – you will get a patent number – you are now patent pending (warning – you will lose $110 doing this…).

To check the patentability of the subject matter of a provisional patent application, it is possible to request an International-Type Search once the provisional patent application is filed, and for this – you want a good set of claims for the Examiner to examine and make the most out of the process. It does take some effort to get some good claims and a good search report – but, this will be much more cost effective in comparison to bumbling down the patent process blind to patentability. So, get a good patent specification on file and then follow this with a good search.

Myth 3 – All countries have the same laws

Again, no – they don’t. Australia, the USA and a handful of other countries have a provisional patent application. However, most countries do not have a provisional patent application. For example, the EU does not have a provisional patent application. The reason is simple – if you haven’t actually invented something at the time of filing – then why should you receive a filing date for the ownership of the invention? What this means in practice – is that if you file, say, an Australian provisional patent application – and you eventually wish to secure patent rights in the EU – then your Australian provisional patent application should in essence be equivalent to a complete EU patent filing. Think about that – the provisional patent specification should be the standard of a complete EU patent specification. Nothing less.

Myth 4 – All Attorneys draft the same Provisional Patent Specifications

I’ll warn you now – it is wild out there – outsourcing, students drafting cases, juniors or multiple levels of subcontracting. I’ll say right now – we do our own work. In my view, a good Attorney needs to interview the client, deeply think about the invention, think about variations, the clients objectives and hand craft a provisional patent specification unique to the invention and the client’s objectives. It is simply not something to be farmed out with little thought – is that what you really want for your invention or companies IP?

The other trick – is the “slim” provisional patent application – quickly drafted, broad and silly claims, not much thought. Again, is this what you really want? Make sure your Attorney is drafting to an international level, there should be at least a handful of claims and the specification should be more-or-less complete. Don’t accept anything less. You may get different prices and opinions, but I urge you to dig deeper – who will draft and look after my case? Where is the information to be stored? Are you sending my case to India? Are you sending my case to a subcontractor? (a warning sign is, for example, a chemist or biotech trained Attorney taking on a software case – yikes !)

The process should not simply be a single phone call and then your application is filed the next day. The firms that do this have some “rave” reviews – but if you read the specifications (and I have) – they are utter rubbish – but the client is happy as the process was a “48hr-turn-around” with a “5-min” fixed fee quote (its takes longer than 5 minutes to understand your years of hard work and brilliant idea). The fact is – a first time inventor has no idea about what the standard a patent specification should be. Just think about it. Make sure you are comparing apples-to-apples and not apples-to-lemons.

I hope the above is useful and if you do need a provisional patent application or a learned opinion on your case, please get in touch.