Re: "provisional patent application" Jeff Myers 17 Jan 2001 12:55 EST

Richard:

We use provisionals frequently.  There is no requirement for claims in a
provisional, it is not reviewed, it is relatively inexpensive, and it buys
you an extra year of patent term (as well as the important advantages that
Tom described in his post).  You could get into an extremely lengthy
discussion of the pros and cons.  One significant drawback/risk is that the
description in the provisional must enable the claims in a subsequent
regular patent application.  You can add  supporting data developed later
but claims must be foreseen by the original description (other claims would
have a later priority date).  A hasty filing of a relatively undeveloped
invention disclosure could prove to be of little value.  We never file a
provisional without using patent counsel to help develop the
application.  While there is no requirement for claims, we draft the
applications with at least some claim-like language and try to determine
and reference all of the potential utilities and fields of use.  There's a
balancing act of sorts in that you want to envision all the potential of
the invention but you don't want to use language so specific that it limits
the claims in the regular application.  Our attorney fees for provisionals
have generally been below $2,000 but have ranged from $750 to $4,000
depending on many factors (well worth it I think.)

Jeff

At 10:43 AM 1/17/01 -0500, you wrote:
>This may be the wrong listserve for this question, but any advice,
>reccomendations, or comments would be appreciated.
>
>One of our faculty has developed what he considers to be a
>potentially patentable process.  RCT has reviewed his disclosure
>information and has decided not to pursue a patent due to its
>limited commercialization potential.
>
>The faculty member's brother, who is a patent attorney has advised
>him to try and register a "provisional patent application"  while he
>(and the university) looks into other routes for getting a "full" patent.
>
>I am not familiar with this provisonal application. Apparently it only
>costs $75, but I am not sure what sort of protections it provides to
>either the institution or the inventor.
>
>Richard
>
>
>                         Dr. Richard H. Moore
>     Assistant Vice President for Grants and Sponsored Research
>Coastal Carolina University           Internet: xxxxxx@coastal.edu
>P.O. Box 261954                          Voice: 843-349-2050
>Conway SC 29528-6054                       FAX: 843-349-2726
>
>
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| Jeff Myers
| Office of Research Development and Administration
| Southern Illinois University
| Carbondale, Illinois 62901-4709
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