Have you ever asked for someone’s opinion, only to find that everyone seems to have a different way of doing the same thing? The conversation often goes something like this. I would do [it] this way. Replace [it] with whatever you are asking about. Well I would do [it] this other way. And this other way just so happens to be completely the opposite way of doing the same thing! Or even, I would never do it that way. Okay, now you’re completely confused.
Different opinions usually have their origin in different perspectives, or different ways of looking at the same problem. Everybody views things from a different perspective, and so different people have different opinions and different ways of doing the same things. This is what makes the world great, and gives us variety and diversity in the marketplace. How much fun would it be if we went to the car lot and all they had were white sedans?
But as I said, this can also lead to confusion. Especially when someone you trust (or should be able to trust) gives a different opinion from someone that else you trust. In the end, you have to make up your own mind. And the person you can trust the most is usually the one who explains to you the different options that are available, including the pros and cons of each option, and then lets you make the decision that is best suited for you.
You might be asking, “What does all of this have to do with filing a provisional patent application?” . . . and “Why won’t my patent attorney file a provisional patent application for me?”
I’ve found that there are patent attorneys who advise clients never to file a provisional patent application. I’ve even heard of patent attorneys refusing to work with an inventor if the inventor wants to file a provisional patent application. I think this is outright wrong. The role of a patent attorney is to explain the options to you, guide you through the pros and cons, and then let you make the decision that best fits your budget, your timeline, and your other personal and business goals.
While I’m not going to discuss all the pros and cons of a provisional patent application here, I can answer your question “Why won’t my patent attorney file a provisional patent application for me?”
You may also be interested in “What is a provisional patent application?”
Why then, you might ask, should I file a provisional patent application, if it is simply going to go abandoned after one year? There are a number of reasons you may want to file a provisional patent application instead of a regular patent application. And your patent attorney should discuss these with you so that you are comfortable making an informed decision for proceeding to protect your invention.
Most important, you should know that even if you file a provisional patent application, you can still file a regular patent application. You can file a regular patent application anytime within one-year after you file the provisional patent application, and your regular patent application can claim priority to the provisional patent application. That means, the regular patent application you file will have the same filing date as the provisional patent application for the subject matter you disclosed in the provisional patent application.
This is a crucial point, and perhaps the biggest reason some patent attorneys don’t recommend (or go further yet by refusing to file) provisional patent applications. So let’s take an example. Say you invented the car. You filed a provisional patent application on March 15, 2010 describing that the car has four wheels, a passenger compartment, and a steering wheel. But you don’t describe the car as having an engine. Later that same year, perhaps on August 1, 2010 you filed a regular patent application claiming priority to the provisional patent application you filed back on March 15, 2010. In your regular patent application you describe the car as having four wheels, a passenger compartment, a steering wheel, and oh yeah, now you also describe the car as having an engine. So your regular patent application (the patent application that will actually be examined by the U.S. Patent Office and perhaps issue as a patent) has a filing date of March 15, 2010 (the date of filing your provisional patent application) – but only for the car having four wheels, a passenger compartment, and a steering wheel. For everything else that you added that was not originally described in your provisional patent application, the filing date of the regular patent application applies. So in this example, the car’s engine gets the later filing date of August 1, 2010.
Why is this important? If you started publishing information about your invention (the car), sold or offered your car for sale, or publicly used your car more than one year before the filing date, then you are no longer able to apply for a patent application. So in this example, if you had offered your car for sale on March 20, 2009 before you filed your provisional patent application on March 15 2010, that’s okay because you filed your provisional patent application within one year of the date you first offered your car for sale. For everything except the engine that is. The car’s engine gets the later filing date of August 1, 2010, which is more than one year from March 20, 2009 (the date you first offered your car for sale). Therefore, you are not entitled to patent protection for your car’s engine.
How do you avoid a situation like this? Simple. Be as complete and thorough as you can when you are describing your invention in the provisional patent application. Don’t leave anything out. Make sure your patent attorney understands each and every feature of your invention. And don’t be afraid to speak up and tell your patent attorney that something is missing when you review the draft of the provisional patent application your patent attorney has prepared, before it gets filed. Your patent attorney’s feelings won’t be hurt if you speak up and tell him or her that something is missing. You will be hurt, however, if you don’t speak up in time and an important feature of your invention is left out of the provisional patent application.
So, should you file a provisional patent application? Ultimately, you will need to make the decision, weighing a number of factors, including budget, timeline for taking your invention to market, and various other business considerations and goals you have for your invention. And in some instances, it may make more sense to file a provisional patent application initially, instead of a regular patent application. Be sure to discuss all the pros and cons with your patent attorney so that YOU can make an informed decision. And if your patent attorney refuses to discuss provisional patent applications with you as an option, you might want to find another patent attorney.
