I apologize for the confusion. I ran out of time and didn’t fully make my comments clear, as you describe. Also, the term “utility provisional patent application” was a typo — it’s “utility patent application.”

Otherwise, I agree with you completely that filing a provisional patent application can be the best route in certain circumstances. It can save a lot of time and money while preserving patent rights. My fear is that most people will not understand when it makes sense or not.

More importantly, I am concerned that some may file a provisional patent that is lacking some required element and will find out at some later date that they do not have an effective filing (priority) date so that any intervening events — publications, sales, offers for sale, etc. — will then act to irretrievably lose their rights.

I am currently working with an inventor who filed a provisional in 2004 and then a utility (regular) application in 2005, claiming priority back to the provisional. Unfortunately, when he filed the provisional, he did not adequately describe all the elements of the invention and the examiner refused the priority date. Because he published an article between those dates, he permanently lost any foreign filing rights.

I’m not bashing anyone, I’m merely pointing out that many, many things can go wrong without proper advice. In the end, the absolute goal is to obtain a patent that is both (1) a valid and enforceable and (2) infringed by competitors. A patent that is either invalid or valid but so narrow as to not be infringed is completely useless.

Ed.

Actually, what you are describing is their full utility patent, and it looks like they’re working with an actual law firm on that one. The process is in two steps. First, you first file a provisional application — hence, you get “patent pending” status, in a completely legal way — and then you work with a law firm to file the full utility patent. Seems smart to me, because during the second step, the law firm can reference the provisional application and work more efficiently.

Sure, there are reasons to be wary of provisional applications. But if you want to be protected while “testing the waters” and before committing to maybe $5,000 – $10,000 for a full-blown utility patent, it’s certainly a smart option.

You’re correct. It raises the question.

Mea culpa (or whatever term would fit here).

Thanks,
Stephen

Um. “Begs the question” refers to “question-begging”–i.e., a circular (logically illegitimate) argument. A lot of people lately use it to mean “this brings up the question of” or something like this.