Provisional Patents: With Claims or Without?

A provisional patent application lasts for 12 months and can be much less formal than a regular utility patent application. They are supposed to be complete and thorough enough to satisfy the same section 112 requirements as a regular utility application with regards to enablement, best mode, and written description, but provisional patents are not examined by the Patent Office, so that burden is not meaningfully tested.

One interesting difference from a regular utility patent is that claims are permitted but not needed in a provisional patent. Sometimes, circumstances require filing a provisional without claims; for example, when a client asks: “Can you file something today?” Or when the client is experienced in the realm of patents, and has thought it over, and has given a policy directive that they don’t want claims filed with their provisionals. Okay, no problem.

But when you do have a choice, should you file claims with a provisional patent application? Or not? You can find thoughtful experienced patent prosecutors on both sides of that question. Personally, I say yes, and if that is all you need, then read no further, thanks for dropping by, and have a nice day.

I understand two different reasons for not filing claims. First, the provisional claims may be much broader than the claims that ultimately issue as a patent, and so the additional narrowing claim language may not be entitled to “equivalents” under the doctrine of equivalents. But that reasoning only applies to claims that are not literally infringed. I’m a harsh proud man—if you are practicing the invention in one of my patents, then you will be literally infringing my claims, I don’t want or need doctrine of equivalents. And if you are taking loss of equivalents seriously, I suggest you start by counting how many reported opinions each year find that the defendant infringed the patent under the doctrine of equivalents.
Another justification for omitting the claims is to conceal your intentions as long as possible and to maximize your options for claim language a year later when you refile the provisional as a regular utility application. I respect that reasoning, but it cuts the opposite way too by creating a suggestion that you did not really settle on the precise nature of the invention until you did actually provide the claims.

On the other hand, by including the claims with the provisional, you are creating another different suggestion that is far more useful—that you did know (more or less) the true nature and scope of the invention at the time that the provisional application was filed, and moreover, that the provisional application actually enables and satisfies the best mode requirements for those claims. That is a very useful and desirable impression to be making.

Now, this whole subject is actually quite deep and subtle, and susceptible to a longer and more formal consideration than a mere blog posting. But this is a mere blog posting, this is what you get.