Provisional Patent Applications - Patent DIY at Your Own Risk

Unless you have no access to media (television, print, radio, Internet), you have probably heard or seen at least one advertisement about services, such as Invent Help or LegalZoom, that allow the public to generate their own legal documents at a low cost. In some instances, these services may promote their use to assist inventors in obtaining patent protection. This is considered Patent DIY.  While this may provide an inventor with a supposedly lower-cost way to access the patent system, using these services when patenting can be full of pitfalls for the unwary.

Why Patent DIY Can Prove More Costly Than Hiring A Patent Attorney

One such pitfall deals with what these services may promote as a “Provisional Patent.” However, there is no such thing as a “Provisional Patent,” only a provisional patent application. When a provisional patent application is filed, it is a placeholder in line at the Patent Office that gives the inventor up to one year after filing to convert the provisional application to a non-provisional application and still get the benefit of the original filing date. If the provisional application is not converted to a non-provisional application, it expires and no patent will ever issue. Unfortunately, unwary inventors may use these services to file a “Provisional Patent” and think they have a patent merely by filing. But all they get is an application that has not been examined for patentability and it is only good for a limited time (up to 1 year).

Another pitfall of using these services in the provisional patent application context is that an improperly written provisional patent application can be almost as bad as never having filed an application in the first place. The claims contained in a non-provisional patent application are what the Patent Office examines to define the scope of protection for an invention. A provisional application usually does not include (and is not required to include) claims. However, if the invention (and how to make/use the invention) is not described in sufficient detail in the provisional application, the provisional application may not be sufficient to support the claims later included in the non-provisional application. Accordingly, the inventor may lose the benefit of filing a provisional application in the first place – getting a filing date for priority purposes.

Common Patent DIY Issues

Regardless whether you are filing a provisional or a non-provisional patent application, there can be other pitfalls of filing the application yourself. For example, a common tendency is to describe the prior art in a lot of detail, including positive descriptive comments about the prior art. These types of comments can often backfire when the Patent Office later examines the non-provisional application because the inventor’s own application may provide the examiner with the support that he/she needs to reject the claims. By merely indicating what is lacking in the prior art and framing it in the context of what the invention offers, this makes it less likely that the examiner will issue an obviousness rejection using the statements in your own application.

While services such as LegalZoom may have been created with noble intentions – allowing the public essential documents without substantial inconvenience or high fees – using such services to pursue patent protection can be fraught with risk. But the largest pitfall is that an inventor loses his/her potential for patent protection by using these services, which may be a loss of money far greater than the cost of engaging a patent attorney to assist in the process.

For more information on this topic, please visit our Patent Protection service page, which is part of our Patents practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.