Monday, August 29, 2005

Discussion of provisional patent applications

A board recently discussed the issue of a complex, expensive provisional application. The initial post:

Anyone else ever drafted or received a bill (for you in-house people) for a provisional application with 100 claims and 25 pages of spec that cost $20K? What about a $30K utility application? both are biotech. Am I just working with the wrong firm?

In a provisional patent application, one is trying to secure written description support for claims in later-filed non-provisional applications. Although one does not have to denominate "claims" in a provisional, it is useful to formulate the disclosure in terms of claims (or text that looks like claims) to ensure that written description for the later claims is clearly present in the provisional.

Whether or not to draft a full set of claims, with detailed dependent claims, at the time of the provisional, may be questioned. If one has such complete knowledge of the invention, one might ask "why not file the non-provisional"? There are long delays in some art units, and getting prosecution started may be advantageous. If there is a good reason to defer filing a non-provisional, perhaps, but the reason needs to justify spending a lot of money early. If those claims are going to change, maybe this is not a good strategy.

All a provisional does is to insulate one from art arising after the provisional filing date (and before the nonprovisional). Apple was indeed slow in filing its provisional, and may pay the price. But that problem was timing, not detail of the provisional. If writing numerous claims slows you down, it may not be worth it.

-->from the board-->

Although it does sound like the cost may have been excessive in this case, I have written many biotech provisionals for at least 20K. We usually try to write provisionals as regular applications, and have seen problems with crappy inherited cases being chewed up and spit out by Examiners. Seventy-five to 100 claims is not unusual in a complex biotech case, but the recent fee increases have hurt some. I don't think 30K is exessive in a complicated biotech case, particularly where there is a lot of data to wade through and little help or guidance from the inventors. I have also written cases which are over 200 pages and have written over 200 claims. The most expensive case I wrote totaled close to 50K. We don't even like to look at a case for less than 10K, and prefer at least 12-15K. But we do listen to the client and give them what they are willing to pay for. But, if their requested limit is too low, we usually pass.

Yes, draft your full set of 100 claims. Go nuts. Then (1) put them in a memo to the file regarding future CON apps, (2) collapse all 100 of them into prose form and stick them in the spec so you have support for those CONs later, and (3) choose the "main" invention and file the claims on just that (20-30 claims, no more than 3-5 independents).

It saves money now, and you've got future filings mapped out. Explain it to the client, and you'll look like a hero for mapping out their future strategy and deferring prosecution costs while they work on fleshing out the marketing of the invention. Yes, you spent time drafting all those claims, but the whole invention's mapped out, and future filing costs will be proportionally lowered.

Converting a nonprovisional to a provisional (MPEP 601.01(c)):


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