Provisional Patent Applications: Use and Abuse

PROVISIONAL PATENT APPLICATIONS: Use and Abuse is the completion of a four-book series on the topic of quality in patents and patent portfolios. This book describes a provisional patent application (PPA), shows how it differs from an ordinary non-provisional application (NPA), and explains how it can provide an early priority date for later applications and patents. There are few formal requirements for a PPA, which can be good in that it gives freedom to explain an invention in the inventor’s own words, but can also be bad in that the application often fails to explain the invention clearly and comprehensively. Critically important is that the PPA present and define the “key claim terms” (KCTs) that will later be used in the claims of an ordinary patent application and a resulting patent. If a PPA defines these terms and explains the invention well, it is a “good” application. If it does not, then it is a “bad application.” The book includes four chapters. • First, a discussion of the provisional application generally, including its advantages and disadvantages relative to a non-provisional application. • Second, four specific cases of very good PPAs, which create a model against which other PPAs may be judged. Each case includes an introduction, a statement of what happened, and a summary in the form of Lessons Learned from that case. • Third, nine cases of bad PPAs, in which all legal protection is lost, or in which the PPA fails to provide an early priority date for later applications and patents. • Fourth, a summary of the major lessons in the book, organized by strategy, quality, and drafting of provisional applications. PROVISIONAL PATENT APPLICATIONS: Use and Abuse is intended to help patent professionals and inventors draft provisional applications clearly and broadly, thereby providing the early priority dates necessary to protect inventions. It is intended also for corporate and IP executives, as well as engineers, who are not actively involved in the drafting process but who want to understand how to make best use of the provisional format.

Larry M. Goldstein is a U.S. patent attorney specializing in Information & Communication Technologies. He evaluates patent quality, manages patent portfolios, is engaged actively in the drafting and prosecuting of patent applications, and has served as an expert witness in several high-profile litigations involving patent essentiality and FRAND licensing. He is the author of the four-book series about patent quality, including PROVISIONAL PATENT APPLICATIONS (2017); PATENT PORTFOLIOS: Quality, Creation, and Cost (2015); LITIGATION-PROOF PATENTS: Avoiding the Most Common Patent Mistakes (2014); and TRUE PATENT VALUE: Defining Quality in Patents and Patent Portfolios (2013). He helped establish the patent pool for licensing of 3G Wideband CDMA technology, and he is a coauthor of the book TECHNOLOGY PATENT LICENSING: An International Reference on 21st Century Patent Licensing, Patent Pools and Patent Platforms (2004). Mr. Goldstein holds a B.A. from Harvard College, an MBA from the Kellogg School of Management at Northwestern University, and a J.D. from the University of Chicago Law School. He may be contacted at larry.m.goldstein@gmail.com or through his web site www.truepatentvalue.com.

Gil Perlberg is an IP development strategist focusing on the creation of high-value patent portfolios. Drawing on more than 20 years of senior R&D and product management experience, Gil specializes in aligning the protection of intellectual property with business objectives and R&D innovation. He has managed development and marketing in multinational and start-up companies in a wide range of industries. His previous positions include Vice President of IP at Shellcase Ltd., a semiconductor IP company, Chief Operating Officer at Hybrid Razor, Ltd, a consumer product company, and Vice President of Product Development and Engineering at TraceGuard Inc., a homeland security company. Gil also facilitates innovation sessions at local and international companies, specializing in IP generation and new product development. He is a named inventor on more than 20 US patents. A graduate of the Technion (Israel) in Mechanical Engineering, Gil holds M.Sc. degrees in Mechanical and Electrical Engineering from Drexel
University (PA) and an MBA from New York University (NY). He is also a graduate of the Technion Institute of Management. He may be contacted at gil@perl-ip.com.