Risks of Filing Provisional Patent Applications

The due diligence process must take into consideration the competitive patent landscape.

Are the patents paid up in the Patent Office?

Do at least some of the patent claims cover the seller's products?

My client found CleanCo to be a good target for acquisition because CleanCo's product met a strong consumer need and, at that time, commanded a premium price in the market.

Due diligence revealed that CleanCo had few assets: the small manufacturing plant, limited but growing sales and distribution and several patents covering the sole CleanCo product. CleanCo owned the patents and had kept the fees paid. CleanCo's patent attorney had done a good job on the patents: the CleanCo product was covered well by the patents and there were no obvious legal errors made in obtaining the patents. So, I gave the transaction the thumbs up from the patent perspective. If a regular, complete, patent application is made ready and filed within a year from the filing date of the provisional patent application, the regular patent application may be accredited to the filing date of the provisional patent application, but only if the provisional application meets best mode and enablement requirements.

In order to be legally binding, the provisional patent application must adhere with the first paragraph of section 112 of the patent law. As the U.S. Patent and Trademark Office does not consider these applications, it may not become obvious that a provisional application is worthless until after the deadline for filing a patent application has elapsed. An unacceptable patent application has nothing of value. A provisional patent application that is not designed by a patent attorney is likely to have numerous hindrances.

Various errors that can be made in drafting a patent application are explained in my guidebook on how to find a patent attorney.

If there is no finances for a complete application and a provisional application is filed, a full application designed by a patent attorney ought to be filed as soon as viable after the provisional application is filed. Nobody will prompt you of the cutoff date for filing an authentic patent application.

With these risks considered, provisional patent applications that are not drafted as full regular patent applications can still be beneficial for gaining "patent pending" status if there is simply no resources for a comprehensive patent application.