Full Information Disclosure in Provisional Patent Applications

Full Information Disclosure in Provisional Patent Applications

October 10, 2022
Walker Weitzel
Patent Attorney , Patent Law , Patent Learning

Patent applications

The first step after inventing an idea, product or process is to file a patent application to get exclusive ownership rights for patent protection. The application is filed with USPTO (the United States Patent and Trademark Office) and can be a provisional or non provisional patent application. 

  • Non provisional patent application – a formal patent application that provides patent ownership for 20 years after being approved. This application has a higher cost with more detailed requirements and specifications, with the application being granted or rejected after review
  • Provisional patent application – an informal patent application for one year to get patent protection during the marketing and development of the patent invention. A provisional patent cost is lower than a non provisional patent application, with fewer requirements. After one year, the formal application must be filed to get issuance of the patent, as the patent protections are void at the end of the year

Even though a provisional patent application does not have as stringent requirements as the non provisional one, the complete details ascertaining the patent invention must be disclosed. Failure to do so can result in legal consequences

The following case details show the repercussions of incomplete disclosure in a provisional patent application. 

New Railhead Manufacturing, LLC v. Vermeer Mfg. Co., 298 F.3d 1290

Railhead filed provisional patent applications for a new drill bit for drilling patent applications. According to the US Patent Law, a patentee must file for a provisional application within a year of the sale date. Railhead met the law patent’s requirements by filing a provisional application within the year their patent was sold.

Whereas, Railhead’s non provisional patent application was filed more than a year after the sale of their patent invention. This allows the patentee to claim priority according to the earlier patent filing date of the non provisional application. But it also means that the patent invention will be reviewed according to the details given in the non provisional application. Any additional information disclosed in the ensuing provisional patent application will be rendered invalid and will not be considered in the priority claim. 

In the Railhead case, the accused infringer claimed that the patent should not be granted the advantage of priority claim because of new information about the drill method in the provisional patent application. Upon a closer investigation, it was discovered that the provisional application did not include information about the angular relationship of the drill. The Court ruled against Railhead because the drill was sold more than one year of the date of the provisional patent application. Thus, rendering the claim invalid because of the US Patent Law. 


It is critical to ensure that your provisional patent application includes complete details about your patent invention when being submitted at the patent office. Missing information can lead to the invalidity of the patent, making your provisional patent claim invalid when establishing a priority filing date for your patent invention.  

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