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!