I am reviewing a PPA template from Brad Fach's patentfile.org. The PPA section comments include:

*Claims are not required for a provisional application so if you are in a rush for time then please don’t worry about adding them.

**I would actually prefer people to NOT write claims or only include 1 claim. I have seen many applications where people have written pages and pages of claims and this is a waste of your time and could be very risky if not done properly.

If you feel that you must, please only write one or two fairly broad claims that summarize your invention.

What are the claims errors that would jeopardize the patent?


Although you aren't required to include claims in your provisional patent application, patent attorneys disagree over whether you should include include them. Those who oppose including them argue that any calim in a provisional patent application will probably be changed by the time the inventor files a regular patent application. These attorneys are concerned that changing he claims might be considered an amendment of the claims--which might limit the scope of the patent (Fest corp v Shoketsu Kinzoku 2002). Other Attorneys believe that you should include at least one claim in your provisional patent application to protect your rights outside the US.

Patent Pending in 24 hours 6th ed. pp80

The template contains a section:


In this section the author indicates:

insert a detailed description of your invention here. This is the most important section. Once you file your provisional patent application you cannot add to it so make sure you describe your invention in plenty of detail. How does your invention work? What material is it made from? What features or parts does it have? How else could you make your invention?

  • 1
    Every single patent attorney I've ever heard of starts writing a patent with designing the claims. I wonder why they do that if the claims don't matter. - On a serious note, I'd like to now what the author thinks too.
    – user18033
    Jan 6, 2018 at 22:12
  • Keep in mind that this is a provisional patent and not a non-provisional patent. It may be that the requirements / strategy / best-practice change when shifting from the provisional to the non-provisional context.
    – gatorback
    Jan 6, 2018 at 22:27
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    Yes. And if it's not written in the exact wording of the non.-provisional, everything added will have the priority of the non.-prov. However, anything you claim has to be supported (which basically means literally in) the description. So a provisional without claims wont have support for the claims which means the claims wont have the priority which means you can save the money and throw the prov. away. Patent law in a nutshell ;-).
    – user18033
    Jan 6, 2018 at 22:30
  • @DonQuiKong: Excellent point (+1). I think the point you are making is that it is critical to include as much scope as possible in the description in order to ensure that any and all future claims are supported in the future. I added a link to the template and provided the author's comments regarding the description.
    – gatorback
    Jan 6, 2018 at 22:51
  • well yes, but you need the exact wording of the claims in the description. And if you've got that, why leave the claims out? And if you dont have it, you won't be able to formulate remotely good claims.
    – user18033
    Jan 6, 2018 at 23:13

1 Answer 1


The risk would be that they imply that the invention has certain features. If in your non-provisional you go for broader claims, there is a line of reasoning that suggests that you were not in possession of the broader embodiment when the provisional was filed.

As far as I know, this is only a theoretical risk. I'm not aware of any case in which this has been a deciding factor.

However, including claims in your provisional has one key benefit. If those claims are also in your non-provisional, there is no question of whether the provisional properly supports those claims. Of course, these do not need to be in an explicit "claims" section in the provisional, and could quite reasonably be in a set of statements of invention.

Moreover, as DonQuiKong mentioned in comments, it is usual practice for drafters to start with claims and work backwards through the description to ensure that the description properly enables the claims. The alternative runs the risks that the claims will need to include certain features which are not present (or properly described) in the description.

Thus, since you will likely be starting with claims, why not include them?

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