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Bad Provisionals are Really Bad

Provisional applications that are incomplete, “quickly” drafted, or otherwise are incomplete are, in my opinion, some of the most dangerous documents that can be drafted, but also speak to some underlying problems with the attorney’s abilities. The biggest issue is that there is a possibility that the description of the invention is insufficient to support the eventual claims that may accompany a non-provisional application.

The danger is that two filing dates may be assigned: one for the incomplete provisional, and another for the added material that was necessary to complete the disclosure. This may lead to losing foreign filing rights and/or invalidating the US patent, dependent on the exact timeline.

Incomplete provisionals are classically done at the last minute to protect a product that is being shipped the next day or just before a client is hopping on an airplane to present a paper at a conference disclosing the invention. It is even more dangerous to draft an incomplete provisional on the anniversary of such an event.

One consequence is that the client has the mistaken belief that they are fully protected by an incomplete provisional. Their marketing program may begin to tell potential customers about the new development, they may begin shopping the idea around for licensing, or they begin strategizing how they can exercise the patent against a competitor. The client begins to act like they have patent protection and relies on it.

Another consequence is the specter of having two filing dates, the second of which may pose problems under 35 USC 102 or similar laws of foreign states and serve to invalidate the patent, especially if the new information is necessary to support the claims.

I know that many patent practitioners file quickly drafted provisionals in “emergency” cases, but I question whether this reflects on a deeper problem with their practice.

Patentable ideas within a company tend to have strategic significance to the company, and also have a good bit of visibility within the engineering ranks and, maybe to a lesser extent, the management ranks of the company.

My question is this: how can a patentable idea, one great enough for the client to invest significant resources to protect, be conceived, developed, and brought to the point of being disclosed without the patent attorney/agent being aware of it?

It seems like the client/attorney relationship is not as strong as it should be. Managing the client relationship should include a periodic review of new developments as well as a continuing education for managers and inventors alike as to the importance of intellectual property protection, how to identify items that may be protected, and which items may be strategically protected from a business perspective.

Many clients do not see the need for the attorney to stop by, chat with the engineering staff and have a meeting with the business managers to periodically review the status of new products and ideas, especially when the attorney is billing some absurd number of dollars per hour. This is one area where the attorney’s billing practices can drive very bad behavior on the part of the attorney and client.

I suggest that the ‘need’ to do shoddy provisionals is but one symptom of an attorney’s failure to give the best value possible to the client, not only in the inability to draft patent applications quickly and efficiently, but also in the inability to properly manage the client relationship.

For more on the Embedded Patent Attorney, see here, and here, among other places.