"Enablement, Enablement, Enablement": Evaluating the Strength of a Provisional Patent

16 October 2013 Privacy, Cybersecurity & Technology Law Perspectives Blog

There’s an old saying that, when it comes to establishing the value of real property, it’s all about “location, location, location.”  When it comes to intellectual property, it can be said that it’s all about “enablement, enablement, enablement.”  This is true whether one is considering a utility patent application, which can ultimately mature into a patent after examination, or a provisional application, which cannot.

A provisional patent application is often referred to as a “bookmark” or a “placeholder” since it establishes a priority date for the subject matter disclosed in the application as filed.  However, a provisional application is valid as a priority date marker only for that subject matter which is disclosed by the application in the manner specified by 35 U.S.C. 112 – that is, in a manner that allows one of ordinary skill in the art to make or use the claimed invention.

Therefore, an important test for determining the strength of a provisional patent application is to ask whether the provisional patent application enables the invention that the applicant ultimately wants to claim.  The provisional patent application, therefore, must be evaluated in much the same way as a utility application would be – that is, the text of the provisional application should be carefully reviewed for technical accuracy and completeness, paying special attention to making sure that the provisional application describes technology that the company is still using.

Brilliant ideas may fit on cocktail napkins; strong provisional patent applications typically do not.

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