Provisional Application – a Metaphor

I was talking with a client about two weeks ago and explaining the benefits of a provisional application.  I was telling him that a provisional  application is place holder – it keeps your spot in line – but he had a more unique way of expressing the idea.

Imagine you’re in line at the deli counter.  You take a number.  Once you have your number, you can go walk around the store, pick up the rest of your groceries, come back, and jump in when your number is called.  You get served before all the people who have numbers after yours.  A provisional application is similar: once you’ve filed it, you have a year to “walk around the store.”  As long as you come back before the year is up, your number is good.  If you wait too long and the year goes by, you lose out on your number.

The metaphor basically works.  A provisional application also limits what you can order with that number.  Let’s say, instead of just taking a number at the deli counter, you could also place a sandwich order.  You take #129 and ask for a ham and turkey sandwich.  If your order is like a provisional, you can come back within a year and get a ham and turkey sandwich.  You can come back and get a ham sandwich, or a turkey sandwich.  You could ask for just bread.  But you couldn’t ask for a roast beef sandwich or a turkey, ham, and salami sandwich.  If you tried to get those last two sandwiches, you’d have to pick up a new number, because your new order was different from (and not encompassed by) your first order.  Make sense? With a provisional application, the follow-on patent application to the provisional has to be limited to what is disclosed in the provisional – claiming more than was in the provisional prevents you from using the provisional’s filing date.