High Rate of Abandonment of Provisional Patent Applications

More than half of provisional patent applications are abandoned without ever reaching the non-provisional application stage. Thus, the protection lasts for only 12 months. Provisional applications are seen as a low-cost way to claim a priority date and to delay the higher cost of drafting and filing a non-provisional application while extensive patent searches are conducted, marketability is determined and commercialization evaluations are completed. Provisional patent applications also offer a way to shift the patent term back by one year, an advantage if your product sales are greater at the end of the patent term than at the inception. This tends to be the case in areas where there is product testing and regulatory approval needed in the commercialization process (FDA, for example).

Provisional applications only provide protection if they include a sufficiently detailed (“enabling”) disclosure. In a small study of provisional applications, Dennis Crouch of Patently O found that slightly more than one third of provisional patent applications do not include a claim (it is not required for provisional patent applications). This tends to tell me that about two-thirds of patent applicants do a more thorough job of application preparation to ensure patent rights are in fact protected, aligning with the best practices that we “preach” to our own clients.

However, of some concern is that Dennis Crouch found that “about 15% of purported provisional patent applications are essentially a stack of presentation materials”. This is a risky practice for inventors. It is probably (but not necessarily) better than nothing. This was a common practice up until a few years ago. With the new race to the patent office, I expect this practice will experience a resurgence, especially in the university environment.

However, under the newer patent regime, priority documents are reviewed for enablement or are used to defend infringement claims. The only time I believe such a “sketchy” application should only be filed is where there is truly inadequate time to prepare and file a proper application disclosure prior to a speaking engagement, other public disclosure of the invention or offer for sale. In such case, however, we always recommend that a more complete application be filed within days or weeks to supplement the weaknesses inherent in the “rush” filing.

In the case of provisional patent protection, your protection is only as good as the disclosure. Poorly prepared and strategized provisional applications can limit protection and prevent broader protection in the future. Working with a professional patent practitioner will give you the best chance to protect and commercialize.