Precautionary Provisional Patent Applications

Since March of 2013, I have been filing more and more provisional patent applications. This was expected, due to the increasing importance in filing as early as possible as a result of the change to a first-to-file system. However, a particular type of provisional application we’ve labeled a “precautionary” provisional patent application (3PA) has also become more popular.

We have characterized 3PAs as an application that comprises not too much more than the disclosure from the inventor, reorganized and edited to comply with the filing requirements of a provisional application. Many in the industry commonly refer to these as “cover sheet applications.” The substance of the disclosure from the inventor in this case needs to be more than a brief description, but instead should include a substantial amount of detail that a patent attorney would otherwise be drafting to flesh out the invention.

There are a number of advantages to filing this type of application. First, because attorney time is minimized, the cost to the applicant is substantially reduced as compared to a typical provisional application. Second, such an application can be filed very quickly, obtaining the earliest filing date possible.

However, there can also be disadvantages to this application. By minimizing the amount of drafting done by a patent attorney, it is unavoidable that the applicant loses the benefit of having a patent professional prepare the bulk of their application. As such, the scope of the provisional application might be less than it otherwise might be. Additionally, the language used might not be conducive to drafting a claim. This could potentially require substantial revision when filing a non-provisional application, possibly resulting in not getting the benefit of the filing date of the 3PA.

In sum, a 3PA can be a great filing strategy for obtaining an early filing date at a low cost, but should only be done in limited circumstances. To figure out if a 3PA is right for you, please consult with a patent attorney.

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