Note: this answer is given as a near-copy of a comment which I wrote to Russ’ post. It is incomplete, but I think that it is significantly helpful to answering the question. If this answer was to be typed up to a client, it would be complete. My apologies. Also, I regret that I did not write it in a format other than as a comment to another answer. If that’s not ideal, then… oh, well. I still think this is more beneficial to read than to overlook:
[edit:… this got too long for me to finish. I had to go back to doing the work that I’m only talking about academically here. but I wanted to reply]
First, [Russ] I take issue with several of your statements, as merely being logically conclusory without more detail.
For example: “committing malpractice. period.”
I should think that while offering a legal opinion, one would refrain from being unequivocal about a legal term. Here, the term is “malpractice.” Here, the use is unequivocal by saying, “period.”
Malpractice is when someone is reckless with performing the practice of law. The standard is what would be considered the ordinary standard of care for the profession, among peers in that profession, from the perspective of the community. Here, the community includes intellectual property attorneys. Are you saying that an expert witness in intellectual property law would say that the ordinary standard of care was not upheld, when a patent attorney files a provisional application? Keep in mind: the patent office itself is well within the community which could be asked to provide such an expert, and a provisional application is literally a method of interacting with the patent office offered by the patent office itself.
I think that the answer is no.
So I will give you the benefit of the doubt, and presume that your casual use of the term was meant to convey:
“I am upset that people file provisional applications. In my experience, I think that the sort of attorney which is regularly filing provisional applications is the sort of attorney that I think runs afoul of behavior that could find them liable in a suit for malpractice, someday. I think that people who see my comments to this effect would understand that I am being emphatic, rather than literal.”
As to the larger part of that statement:
“Any registered practitioner who will file a “thin” or “cheap” provisional patent application is committing malpractice.”
note that this statement is equivalent to these two statements:
- “Any registered practitioner who will file a “thin” provisional patent application is committing malpractice.”
- if “thin” means ~lacking in adequate content~, then I agree with this statement: “Any registered practitioner who will file a provisional patent application with inadequate content is committing malpractice.”
- if “thin” means ~as much as can be managed at the time when the applicant wants to file~, then I completely disagree. An inventor is the master of his invention. The attorney is not to presume that he knows the invention better than the inventor. The attorney is to file the best application that he can, in his reasonable judgement, to serve the client. If the applicant cannot provide adequate content, then the practitioner should not file it. However, adequate content is in the subjective discretion of the attorney. If the attorney is able to see the value which can be had by filing with as much as he can manage, then it is not unreasonable to do so.
- There are good practices which effect provisional applications as a rigid product in the same way as a large firm’s template-like behavior for assuring compliance with non provisional applications. These practices are inappropriate in many cases, because they overlook the difference between amount-disclosed-at-date-disclosed and adequacy-for-examination. The attorney filing a provisional to an analogous-execution but lower-quantity-of-requirements standard, compared to a non provisional application might deprive a client of having acquired a priority date on the scintilla of information which ultimately makes the difference between infringement and monopoly. That provisional could, while not-optimal, provide that benefit in a good patent…
- “Any registered practitioner who will file a “cheap” provisional patent application is committing malpractice.”
“Many patent agents and patent attorneys will file “cheap” or “thin” provisional patent applications with the excuse that the “client approved it” or that the “client only wanted something very cheap.”
The only appropriate thing for a practitioner to do in this case is to reject the client and state that they cannot represent them in this matter.
This one, also:
“If you are trying to “save money” by doing a provisional patent application, you will spend far more money and get much less protection than you expect.”
The protection that is possible in the ultimately granted patent will be limited by the disclosure of the application which provides the earliest basis for the matters that appear in issued or potentially re-issuable claims.
It doesn’t matter whether the original priority document was a journal article, a non-provisional application, or a provisional application, or even public use. The limitation is not the vehicle, but the net circumstances created at the time of the first disclosure.
Those initial comments I gave also are reading-in some understanding that a non provisional is necessary. For anyone who was not already aware of this: A provisional application is a document that preserves a place in time. It cannot be the document which itself gives rise to a patent, because prosecution does not happen unless a non-provisional application is filed.
Now, being more pragmatic:
publication takes place at 18 months from the priority date. If you file a provisional application, and then a non provisional 364 days later, you only have 6 months before the non provisional application publishes. If the provisional turns out to be more helpful to the public than was strictly necessary to support what is ultimately part of the non provisional, to get claims allowed, it enables members of the public to imitate or compete with the applicant’s invention better than they might otherwise have managed with a better confined disclosure (of the non provisional). So… IN THAT circumstance, where the provisional turns out to have been written THAT recklessly, then there could be a detriment. However, filing significantly less than 364 days, might mean that there could be a decision to abandon the claim to priority to the provisional application, and thereby extend the date from which the publication date was measured, by exactly the amount of time which was otherwise lost by not having originally filed the non provisional application. Why would you do this? to be able to balance the risk of imitation against the risk of there having been an intervening disclosure to the public between the date filing the provisional and non provisional applications. Also, abandoning the claim to the provisional would also increase the likelihood that the first office action arrives before the pending application gets published. Then the publication of the nonprovisional makes the disclosure of the non provisional application a document that is less likely to risk infringements.
Now, to throw -a-bone to the speaker [Russ] : If you could have filed a non-provisional application on a day X, then filing a provisional application instead, and then filing a non-provisional later means that you had to pay fees for both applications, and pay an attorney to file both. In an uncaring world, where an attorney is not tailoring his fees to his client or doing work which allows for efforts to be constructively co-extending, then paying a provisional application filing fee and paying an attorney to draft a provisional application would be costs that were avoided.
However, here is my contrary experience:
Many times, writing the provisional means that writing the non-provisional becomes a piece-of-cake. If I am working on an hourly basis… that means that the non-provisional took less time, because the efforts which went into the provisional end up being the efforts that went into corresponding parts of the non-provisional application. I might have originally explained the exact notion to the client that the detriment to filing a provisional first would be that he was arranging more services than were strictly necessary, and that the planned cost would be higher. However, what resulted was about the same cost. I only say “about,” because I am willing to concede that I can’t possibly know with absolute certainty the amount of time writing the same document would have taken by doing it the other way. I can just say that I have had experiences when the plan was :
“provisional typically costs X, non provisional typically costs Y. X+Y is more than Y,”
“I estimated that provisional would cost X, and it did. The cost of doing non provisional turned out to be Z. X+Z turned out to be about Y.”
Note, here: “But what about the fee for the provisional application?” The filing fee for a provisional application for a micro entity applicant is $70. My hourly rate is a few multiples of that. If $70 is a bugbear to a client who was saved an amount roughly the entire cost of the provisional application, AND they insist upon another $70 discount, then I guess I will just give it to them. I’ll allow myself to be a little colorful here: If I’m doing thousands of dollars of work for someone, and I am not only doing a good job but even saving them money, AND they insist upon me agreeing to discounting my work further, despite knowing ahead of time that they would incur that cost themselves as their responsibility, AND that amount is a fraction of their unexpected overall cost, let alone amounts being saved… then that’s a red flag that something else will be a problem with that person.
And that’s only one example.
“If I get ‘patent pending,’ then ____ says they will support me/ the application/ license the rights from me. I can only afford to budget ___ [$>X], but I cannot stretch to ___ [Y}. ___ [person supporting] can absolutely afford ____ [Y].
For that applicant, doing a provisional gets them to that apparently crucial state indicated by the phrase “patent pending,” costs them a smaller total amount upfront, and then transforms their financial situation. That applicant would otherwise have been stopped at the very beginning.
Another questionable statement:
“You are sending a very clear message to your investors that you don’t believe that your patent application is not worth the measly $600 extra”
Investors are not always patent savvy. For them it would not be a “clear message.” For investors that are savvy, they may actually read the application. If the provisional application is good, then the application which may mature can be as good. If they read the application but cannot tell whether it is good they may show it to their own patent attorneys and find out that it is good. If the application is poor, then the issue was never about the application having been a provisional or non provisional. The issue is that the document was poor, so the fact that it was filed as a provisional instead of a nonprovisional is moot.
Also, “measly $600.”
For someone whom $600 is not “measly,” it is quite likely that they would qualify for micro entity status. Which means that the provisional was $70, and the non provisional was $430. So I have no idea where the “$600” comes from, for someone who needs to save the cost between the two. If the applicant is already an organization which cannot qualify for either of small or micro entity status, who exactly is the investor that we are talking about? IBM is not going to a rich uncle.
If we’re talking about a mid-way funded/ small organization, with savvy investors, for whom filing a non provisional would incur a $600 difference, they are aware that the applicant would be in need of thousands of dollars anyway, and because they are, per se, looking to invest in applicants at that level of finance, they would understand why saving that amount would have been for the purpose of being able to afford putting those dollars into moving the invention along. AFAIK.
“Additional information can be added to ANY patent application – provisional or non-provisional – by a Continuation-In-Part application.:
No. Maybe you didn’t realize you typed it this way and I am merely being pedantic, but a reasonable reader could take this statement as meaning:
- that a provisional application can be changed. No it cannot.
- that a non provisional applicant can be changed. No it cannot.
- that a continuation in part can claim the benefit of a provisional application. No. A CIP can claim the benefit of a prior non provisional. If an application that might strategically have been the same as a “CIP,” with respect to an application filed as a non provisional, then filing the first application as a provisional application would make what you are calling a CIP merely an ordinary non provisional application. However, they are not the same thing, in two ways:
- 1. the provisional expires at 1 year from filing, whereas a nonprovisional can provide the priority date to-be-preserved with the “continuation in part application” at any point during the nonprovisional’s pendency, which could be years.
- 2. if the second application was filed as a CIP, then that fact pattern would mean that the applicant filed the first application as a non provisional, and filed the second application as a CIP non pro, …. and the applicant paid their attorney for two NON provisional applications, and the USPTO for two NON provisional applications’ fees. Having filed the first as a provisional and filing the second as a non provisional would have saved the applicant at least the net difference in fees between one provisional application and one non provisional application, if not also the preparation time costs differences.
- that adding information in a later application is just as good as disclosing earlier. No it is not. Applications are able to be enforced on their allowed claims back to the date of priority. This means that any application which is successful that was copending with an earlier filed application DOES get the filing benefit of the earliest application, BUT:
- only if the subject matter of the allowed claim was adequately supported by disclosure in that earliest application.
- is only entitled to enforcement as far back at the document carrying the supporting disclosure,
- gets published immediately upon the date which is 18 months from its earliest date of priority, whether or not the subsequent document included additional information.
- the previous points meaning: if you disclose later, it becomes public record, useful to your competitors earlier, unless you are not claiming the benefit of priority. Come to think of it, there may be clever solutions there, but which neither you nor I suggested. I will have to contemplate them… if I file a nonpro on day F, and I know more on day G, and day G is before day F+18 months, then I can either choose to benefit from day F, where I think that it is not a detriment to have the new information publish imminently, or, if it is likely to survive a 103 predicated upon the first nonpro, then I could simply not claim the benefit of the first nonpro. Then, when a 103 rejection comes, if at all, then I could overcome it by a terminal disclaimer, essentially merely reverting to the same position as if I’d claimed the benefit of the earlier application anyway, but avoided the publication of the later non provisional, at least in the meantime. If it never happens, then I may buy my client up to 18 months of not publishing.
I will concede this much, right upfront:
My default course of action is always to file a non-provisional application. For most applicants, for most inventions, for most budgets, you might as well be filing a non provisional application.
Provisionals end up being a part of initial conversations most of the time. Inventors ask about them, they have heard of them, they have sometimes already filed a provisional application. Also, even if they don’t bring it up, I discuss them because of the likelihood that they might have asked about it, if they had known to ask. And sometimes…particular circumstances frequently do warrant suggestion of a provisional application.
some off-the-cuff examples of when it made sense to file a provisional which I have incurred:
- When the inventor has a very hard time explaining the invention in a way that can be turned into an application, or they have written a document which they want to file, which is otherwise inadequate for anything other than supporting a later document, and they want to get the ball rolling.
- When the inventor has so many inventions or embodiments that they want to pursue that they cannot make up their mind, and there is very high likelihood that using a single initial document will be used to support multiple distinct and formal documents in less than a year
- When the inventor has no interest in filing internationally
- When the inventor thinks that they would prefer to refine their development of their invention by personal efforts, rather than have a third party search dictate the outer limits of what they might pursue
- ….. aaaand… this is taking a while. Gotta get back to actually doing this job today. I will just post this as its own answer.
[Thanks for reading]